Appeal No. 2004-1131
Application 09/562,632
composition of a silane coupling agent and an alkoxysilylated NCO-containing urethane
prepolymer which has “improved adhesion properties to . . . metal” (e.g., col. 1-2, particularly
col. 1, lines 7-13). Among the examples of epoxysilanes used as silane coupling agents by Tsuno
are “γ-glycidoxypropyltrimethoxylsilane” and “3,4-epoxycyclohexylethyl-trimethoxysilane” (col.
2, lines 24-26), disclosed by appellants as the preferred “(3-
glycidoxypropyl)triethoxysilane” and “β-(3,4-epoxycyclohexyl)ethyltrimethoxysilane”
(specification, page 5, lines 19-21, 23-24 and 26). As appellants point out, the diol used by
Tsuno does not contain acid groups and the compositions are not aqueous based (e.g., col. 3).
Indeed, Tsuno further discloses that “a part or whole of the NCO groups remained [sic] in the
polyisocyanate thus reacted is reacted with the NCO reactive silane” (col. 2, lines 58-61). In
Example 2, Tsuno applies a disclosed composition to a stainless steel plate (col. 5).
We find that the combined teachings of Kubitza, Hatano and Tsuno provide substantial
evidence in support of the examiner’s position. Indeed, one of ordinary skill in this art would
have found in the disclosures of Hatano and Tsuno the reasonable suggestion that silane coupling
agents containing epoxy and lower alkoxy groups can improve adhesion to metals of different
urethane compositions by using the epoxysilane coupling agents as a primer for the composition
or mixed in the composition at various stages. In this respect, Hatano would have taught that
these epoxysilane coupling agents can be mixed with a polyester polyol which can contain acid
groups, and a polyisocyanate to form a composition. Thus, we determine that one of ordinary
skill in this art would have been motivated by the combined teachings of the references to
included an epoxysilane coupling agent, such as those disclosed by Hamates and Tsuno, in the
coating compositions of Kubitza in the reasonable expectation of improving the adhesion of the
composition to metal surfaces, such as aluminum and steel, to address the problem of corrosion
recognized in the art for such compositions. Thus, this person would have reasonably arrived at
the claimed coating composition encompassed by appealed claim 1 without recourse to
appellants’ specification. See In re Corkill, 771 F.2d 1496, 1497-1500, 226 USPQ 1005,
1006-08 (Fed. Cir. 1985); In re Skoll, 523 F.2d 1392, 1397-98, 187 USPQ 481, 484-85 (CCPA
1975); In re Castner, 518 F.2d 1234, 1238-39, 186 USPQ 213, 217 (CCPA 1975); In re Lintner,
458 F.2d 1013, 1015-16, 173 USPQ 560, 562-63 (CCPA 1972); see also In re Vaeck, 947 F.2d
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