Appeal No. 2004-1999 Page 5
Application No. 09/772,001
We conclude that the Examiner has failed to establish a prima facie case of obviousness
with respect to the subject matter of claims 1-20.
We further remand for the consideration of additional evidence which may be relevant to
patentability. Pursuant to our remand, the Examiner should consider the following evidence.
First, the Examiner should consider the disclosure in Harris which establishes that it was
known in the art to use hydrolyzed alkoxysilanes as adhesion promoters or coupling agents for
various polymeric materials (Harris, col. 1, ll. 19-21). According to Harris, the hydrolyzed
alkoxysilanes are typically used as primer layers between substrates and polymeric materials
(Harris, col. 1, ll. 21-25). Therefore, Harris provides evidence that hydrolized alkoxysilane
coupling agent were known for use as primers.
The Examiner should also consider Table 3 at 22 Kirk-Othmer Encyclopedia of Chemical
Technology 150 (Jacqueline I. Kroschwitz & May Howe-Grant eds., 4th ed. 1997), a copy of
which is included with our Decision. Kirk-Othmer lists 3-aminopropyltriethoxysilane, N–(2-
aminoethyl)-3-aminopropyltrimethoxysilane, and 3-glycidoxypropyltrimethoxysilane as
commercial silane coupling agents. See entry numbers 4-6, and 8 in Those coupling agents have
the functional groups required by the claims and are within the alkoxysilane class of Harris.
The Examiner should also consider James R. Steinmetz, Coupling Agents: Silanes,
Modern Plastics Encyclopedia 88 at pages 140 and 142, a copy of which is also included with our
Decision. Steinmetz provides further evidence that use of hydrolyzed organosilane coupling
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