Appeal No. 2001-0233
Application 08/668,640
The Appellants first challenge both the suggestion or motivation to combine the
inorganic filler with polymetallocarbosilane in the proportions and in the particle size or
as dispersed as claimed, and whether a reasonable expectation of success exists. The
thrust of this argument is that Nishihara’s goal is the production of a dense protective
layer, and modifying it in the manner of the instant claims “may” render Nishihara
unsuitable for its intended purpose. (Appeal Brief, page 15, lines 1-24).
We disagree with the Appellants contentions regarding motivation and
reasonable expectation of success. As we have noted above, the instant claim under
review (claim 1) is directed to a composition containing a mixture of two components,
not the end use. Nishihara includes a range of proportions, which is inclusive of the
appellants’ range.
The Appellants make five additional distinctions between Nishihara and the
claims. First, it is argued that Nishihara teaches a percentage of particulate matter
being between 10 and 90, not less than 70. Second, that Nishihara does not teach a
particle size while the claim is limited to a particle size of less than ten microns. Third,
that Nishihara does not teach uniform dispersion of particulate material, and fourth, that
Nishihara requires the use of an organic solvent. The Appellants do, however,
acknowledge that the instant specification teaches the use of an organic solvent to
disperse the particulate material in an intermediate composition (Appeal Brief, page 13,
line 9 - page 14, line 5; Reply Brief page 6, lines 4-9). Finally, in the Reply Brief, the
Appellants state as a fifth argument that Nishihara provides for an optional silicon resin
which is excluded by the instant claims by the use of the “consisting essentially of”
transitional phrase. (Reply Brief, page 6, lines 12-16)
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