Appeal No. 2004-1131
Application 09/562,632
such that the presence of acid groups would be excluded. Thus, while appellants correctly point
out that Hatano does not disclose that the resulting polyester polyol contains acid groups, we find
that one of ordinary skill in the art would have reasonably inferred from the teachings of the
reference that acid groups can be present in the polyester polyol.1
We further find that Hatano discloses that “[f]or applications where a high degree of
adhesion is required for metal foil or the like, a silane coupling component should be used in
combination,” wherein the silane coupler components falling within the structural formula “(3)”
can contain “an epoxy group” and three lower alkoxy groups (col. 10, lines 40-54). Hatano
exemplifies “epoxy silanes such as a γ-glycidoxypropyltriethanolsilane” (col. 10, lines 56-57),
which is disclosed by appellants as “(3-glycidoxypropyl)triethoxysilane” (specification, page 5,
line 20).
As both appellants and the examiner recognize, Hatano does not limit the manner in
which the silane coupling agent is used, and sets forth three ways, including, inter alia, use as a
primer diluted with water, and “the polyol, polyisocyanate and silane coupling agent are reacted
together to synthesize the polyurethane prepolymer,” wherein in the latter, “the silane coupling
agent can be used in an amount of up to 10 parts by weight per 100 parts by weight of the
isocyanate-terminated polyurethane” (col. 10, line 60, to col. 11, line 5, and col. 11, lines 12-14
and 16-19). Indeed, the latter example sets forth a composition that comprises a hydroxy-
functional resin which can contain acid groups, a polyisocyanate with free isocyanate groups, and
a silane coupling agent component prior to forming the polyurethane prepolymer, and thus differs
from the claimed compositions encompassed by appealed claim 1 in that the resin is not in the
form of an aqueous dispersion. Cf. Exxon Chem. Pat., 64 F.3d at 1556-58, 35 USPQ2d at 1803-
05.
We find that Tsuno acknowledges that silane coupling agents, including epoxysilanes,
were known as primers for adhesives used with metals, and disclose a primer coating
1 It is well settled that a reference stands for all of the specific teachings thereof as well as the
inferences one of ordinary skill in this art would have reasonably been expected to draw
therefrom, see In re Fritch, 972 F.2d 1260, 1264-65, 23 USPQ2d 1780, 1782-83 (Fed. Cir.
1992); In re Preda, 401 F.2d 825, 826, 159 USPQ 342, 344 (CCPA 1968), presuming skill on
the part of this person. In re Sovish, 769 F.2d 738, 743, 226 USPQ 771, 774 (Fed. Cir. 1985).
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