Appeal No. 2004-1131
Application 09/562,632
Appellants point out that Kubitza “does not disclose or suggest that a silane of any kind
could or should be used in the compositions described therein,” and “does not contain the
slightest hint that there are any adhesion or corrosion resistant problems with the compositions
described therein” (brief, page 3). Appellants further point out that Hatano discloses a hot-melt
adhesive for flexible-packaging laminates prepared from a prepolymer obtained by “reacting an
excess of isocyanate with a polyol” wherein “[t]he reference nowhere indicates whether the . . .
[polyester polyols] also contain acid-groups,” and thus, although Hatano discloses three different
methods to use the silane coupling agent, “there can be no reaction between an epoxy-containing
silane and an acid group” (id., page 4). Appellants note that “none of the working examples” of
Hatano use an epoxy-containing silane (id.). Appellants point out that Tsuno “does not disclose
or suggest any aqueous based compositions” in disclosing compositions that “comprise a silane
coupling component and an alkoxy silylated NCO-containing prepolymer,” wherein the
“prepolymer contains no acid groups, so that there could never be a reaction between epoxy
groups and acid groups” (id., pages 4-5).
On this basis, appellants submit that there is no motivation to combine the references
because Hatano and Tsuno do not “relate to aqueous-based compositions” as does Kubitza, and
neither suggests “the use of a component which contains both hydroxy and acid functionality,”
and thus “[o]ne of ordinary skill in this art would not look to either of [Hatano or Tsuno] to solve
any problems associated with the compositions of’ Kubitza” (id., page 5). Appellants allege that
even if this person was “motivated to combine the teachings of the references . . . the results
described in the instant specification would clearly amount to unexpected results” (id.).
The examiner responds that Hatano in disclosing three different methods to use the silane
coupling agent, teaches that “no reaction is per se necessary for the coupling component to
work,” and that the absence of a working example of an epoxy-containing silane coupling agent
does not limit the teachings of the reference (answer, page 5). The examiner submits that the
motivation for incorporating the silane coupling agent of Hatano into the composition of Kubitza
“would have been to improve the adhesion of the coating composition” ( id.). The examiner
further responds that appellants’ arguments that Tsuno does not disclose aqueous based
compositions or a prepolymers with acid groups are not persuasive because no reaction between
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