Appeal No. 2006-2649 Page 5
Application No. 10/336,259
Asai teaches that this problem can be avoided by including an alcohol or glycol in
the silicone composition. See page 4, third and fourth paragraphs (“It is an object of the
present invention to provide . . . a silicone composition which . . . will not cause
conduction faults at electrical contacts. . . . This object is obtained by using a silicone
composition containing alcoho[ls] . . . or glycols.”). Asai teaches that suitable alcohols
and glycols include “methanol, ethanol, propanol, butanol, . . . ethylene glycol,
propylene glycol, [and] 1,4-butanediol.” Page 7, fourth paragraph. Finally, Asai teaches
that the disclosed composition “is suitable for use in the vicinity of electrical contacts . . .
as well as for use in electrical insulating materials, electrically conductive materials,
protective coating materials,” etc. Page 9, third paragraph (emphasis added).
We agree with the examiner that a person of ordinary skill in the art would have
found it obvious to combine a hydroxy-functional organic compound with the silicone
composition taught by La Scola. The suggestion to do so is provided by Asai, which
teaches that a silicone composition that includes an alcohol or glycol (hydroxy-functional
organic compounds) does not cause conduction faults at electrical contacts.
Appellants argue that “one skilled in the art would not be motivated to combine
the disclosures of La[ ]Scola and Asai.” Appeal Brief, page 6. Appellants reason that
La[ ]Scola relates to an electrically conductive composition comprising
silver coated mica particles. Asai does not teach or suggest any
compositions containing silver coated mica particles or any electrically
conductive filler. Therefore, La[ ]Scola and Asai are not within the same
field of endeavor because La[ ]Scola relates to a conductive composition
and Asai does not.
Id.
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