Appeal No. 2006-3179 Page 7
Application No. 10/477,069
that “may be derivatized to incorporate many different R2 groups.” Id., page 5, line 35.
The perfluoroalkyl group is used to confer biological inertness, reduced glare, and “soil
resistance.” Id., page 7, lines 45-47.
Ogawa’s compounds have both functional groups described by Gupta. At column
5, lines 46-55, Ogawa describes a preferred surface active reagent which contains
silane and fluoroalkyl (“fluorocarbon”) functionalities. Like Gupta, Ogawa also teaches
to use a fluorocarbon group when “dirt repellency” is desired. Ogawa, column 5, line
49. Six of the 24 fluoroalkyl silane compounds disclosed by Ogawa also meet the
requirements for the claimed “fluoroalkyl silane” of claim 1. Id., column 11, lines 36,
47-49, and 51-52.
There is no express statement to expand Gupta’s coating reagents to the
chemically-related structures described by Ogawa, but the fact that Gupta’s surface
active reagent is generically described (e.g., page 5, line 33) shows an intent to capture
more than just the specific compounds disclosed in his application. In view of the
parallels between the two processes, which include structurally-similar compounds
being utilized to achieve the same goal of substrate surface modification, the skilled
worker would have logically looked to Ogawa to choose surface modifying reagents.
Answer, page 12. The skilled worker would have recognized that Ogawa’s compounds
have both functional groups required by Gupta’s formula, and therefore would have
expected them to be useful in Gupta’s process, providing also the motivation to have
used them.
Appellants argue that “Ogawa refers to a completely different field of art and
seeks to deal with issues that are not seen as problems in Appellants’ claimed field of
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