Appeal No. 2004-1999 Page 4
Application No. 09/772,001
column 1, line 55 to column 2, line 22, of silane based adhesion promoters for organosiloxane
compositions, but there is no mention here of primers. The Examiner offers no evidence
indicating that one of ordinary skill in the art would have understood Lutz as discussing primers
and from the bare words of Lutz, it appears that what is being discussed is not the use of silane
compounds as primer coatings but the use of the silane compounds as additives in polymers to
promote adhesion. An additive mixed into a polymer is not a primer as that word is ordinarily
used. A primer, in the context used by Appellants, is a material used in priming a surface, i.e., a
prime coat.2
We also note that the rejection does not adequately address the limitations of any
particular claim. For instance, claims 1 and 19 require that the surface treatment agent contain a
compound within a specific generic formula. The rejection does not adequately establish that it
would have been obvious to one of ordinary skill in the art to formulate a surface treatment agent
containing a compound within that formula. Nor does the rejection adequately establish that it
would have been obvious to one of ordinary skill in the art to use such a treatment agent in the
patterning process of claims 4 and 20. Where the relevant claims differ so widely in scope as do
the product and process claims here under review, adequate treatment requires they be addressed
separately. We note that Appellants had grouped the product and process claims separately.
2See Merriam-Webster’s Collegiate Dictionary, electronic ed. (2000) entry #2. A copy of
the entry is attached to our Decision.
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