Appeal No. 2006-2649 Page 3
Application No. 10/336,259
Claim 1 is directed to a composition comprising an organopolysiloxane, a
crosslinking agent, a condensation catalyst, metal-coated electrically conductive
particles, and “an effective amount of a hydroxy-functional organic compound having a
molecular weight up to about 1000.” The specification states that “[e]xamples of
hydroxy-functional compounds . . . include, but are not limited to, monohydric alcohols
such as methanol, ethanol, propanol, [etc.], . . . ; [and] dihydric alcohols such as
ethylene glycol, propylene glycol . . . , [and] 1,4-butanediol.” Page 11, lines 7-15.
The specification defines an “effective amount” as a “concentration . . . such that
the silicone composition cures to form a silicone adhesive having improved electrical
conductivity, initial contact resistance and/or volume resistivity, compared with a similar
silicone composition lacking only the hydroxy-functional organic compound.” Page 12,
lines 4-8.
2. Obviousness
The examiner rejected claims 1-17 under 35 U.S.C. § 103 as obvious in view of
La Scola1 and Asai.2 The examiner stated that La Scola teaches an electrically
conductive silicone composition comprising all of the components recited in instant
claim 1, except for the hydroxy-functional organic compound. See the Examiner’s
Answer, page 3. The examiner cited Asai for its teaching of polysiloxane compositions
containing hydroxy-functional organic compounds, and reasoned that a person of
ordinary skill in the art would have been motivated to add a hydroxy-functional
compound to La Scola’s composition based on Asai’s teaching that such compounds
1La Scola et al., U.S. Patent 4,777,205, issued October 11, 1988
2 Asai, Japanese Patent Application 03-128968, published May 31, 1991
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