Appeal No. 2006-1352
Application 10/250,683
contain alkenyl groups, such as vinyl groups, (col. 3, ll. 10-14, 20-22 and 26-28). These silicone
resins are used in compositions which are cured via the hydrosilylation reaction using a platinum
catalyst with heat. The compositions would be encompassed by claim 10 if the RSiO3/2 units
(T units) and R2SiO2/2 units (D units) are used in the claimed ratio range. We find that Sato
would have disclosed to one of ordinary skill in this art heat curable resin molding compositions
containing two organosiloxanes each having R1SiO1.5 units and R21SiO units corresponding to
the claimed T and D units, respectively, as well as vinyl groups (e.g., col. 2, ll. 38-43 and 50-54).
These units are used in certain molar fractions of 0.5 to 0.95 T units and 0.05 to 0.35 D units in
the first organosiloxane and 0.0 to 0.6 T units and 0.07 to 0.998 D units in the second
organosiloxane, from which it appears that the T units form the preponderance of the first
organosiloxanes and the D units form the preponderance of the second organosiloxanes (e.g.,
col. 2, ll. 43-46 and 56-58). Sato uses the organosiloxanes in compositions containing a
platinum catalyst and optionally containing additives including alumina (e.g., col. 7, ll. 46-68).
Sato would have taught curing such compositions (e.g., col. 8, ll. 60-66) in the same and similar
manner to the compositions and curing reaction taught therefor by Mine. Sato would have
disclosed that the moldings obtained have dimensional stability or small thermal expansion
coefficients (e.g., col. 1, ll. 10-13).
We find substantial evidence in the combined teachings of Mine and Sato supporting the
examiner’s determination with respect to claim 10. Indeed, Sato would have reasonably
suggested to one of ordinary skill in this art that the ratio of T units to D units affects the
properties of the cured resin composition. We find that the ratio of T units to D units disclosed
by Sato overlaps the claimed ratio of T units to D units. On this record, we determine that,
prima facie, the combined teachings of Mine and Sato would have reasonably suggested to one
of ordinary skill in this art to use organosiloxanes having different molar fraction ratios of T and
D units in the compositions of Mine as suggested by Sato in the reasonably expectation of
obtaining desired properties in the heat conductive sheets of Mine by routine experimentation.
Thus, one of ordinary skill in this art routinely following the combined teachings of the
references would have reasonably arrived at the claimed invention encompassed by appealed
appeal.
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