Appeal No. 2004-1999 Page 3
Application No. 09/772,001
OPINION
The examiner bears the initial burden of presenting a prima facie case of unpatentability.
In re Oetiker, 977 F.2d 1443, 1445, 24 USPQ2d 1443, 1444 (Fed. Cir. 1992). This burden must
be satisfied by the examiner, otherwise, without more, applicants are entitled to a patent. Id. A
most basic requirement of a prima facie case is the requirement that the evidence provide support
for the factual findings made in the rejections. Such support is lacking here.
First, there is no support for the finding that Lutz teaches the hydrolysis of silanes to
siloxanes (Finding in Answer at p. 4, ll. 18-21). Column 5, lines 31-51 of Lutz, the portion of
Lutz cited in the rejection for support, does not describe hydrolysis, it describes an interchange
reaction between alcohols and the silicon-bonded hydroxyl and/or hydrolyzable groups present
on the organosiloxane (ingredient B) and the silane (ingredient C) (Lutz, col. 5, ll. 21-27). The
reaction is conducted under an anhydrous atmosphere (Lutz, col. 5, ll. 28-40). In other words,
there is no water present. The reaction is not a hydrolysis reaction. Hydrolysis is a reaction with
water.1
Second, to say that Lutz at column 1, line 10 to column 2, line 20 teaches that it was well
known in the art to use silane and siloxane containing polymeric compositions as adhesion
promoters and primers is inaccurate (Finding in Answer at p. 4, ll. 8-9). There is a discussion in
1See Hawley’s Condensed Chemical Dictionary which states that hydrolysis is “[a]
chemical reaction in which water reacts with another substance to form two or more new
substances.” Hydrolysis entry, Hawley’s Condensed Chemical Dictionary, 14th ed. electronic ed.
version 1.0.0.1 (2001). A copy of the electronic entry is attached to our Decision.
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