Appeal No. 2006-3179 Page 8
Application No. 10/477,069
art.” Brief, page 5, ¶ 4. They have defined the problem and field of endeavor too
narrowly. As discussed earlier, both Ogawa and Gupta are addressing the same
problem – improving substrate surface properties – and are engaging the same
technology – surface active agents which include compounds having silane and
perfluoroalkyl groups. In In re Dillon, 919 F.2d 688, 693, 16 USPQ2d 1897, 1901
(Fed. Cir. 1990), the court held that prior art references describing hydraulic fluids and
fuel combustion, respectively, were “within the field of the inventor’s endeavor” since
each utilized structurally-related compounds for similar purposes.
Significantly, Ogawa teaches a process for coating surfaces with compounds
which fall within Gupta’s scope. Ogawa describes 19 different classes of objects and
materials that can be coated in accordance with his method. Id., columns 7-9. Acrylate
is also disclosed (column 9, lines 9-10) – the same material that Gupta’s lenses are
constructed from – but these materials are described for automobile parts and other
commercial, non-medical uses. Ogawa does not include intraocular lens in his list, but
the broad disclosure of objects and materials would have reasonably suggested to the
person of ordinary skill in the art that Ogawa’s teachings are generally useful for coating
surfaces. As indicated in the “Background of the Invention,” Ogawa stated the field of
use broadly. “The surface of the substrate such as plastic, metal, ceramics, fiber,
woods, concrete, paint or the like have been treated for improved use in a variety of
fields.” Id., column 1, lines 22-24.
The purpose of surface treatment described by Ogawa is to provide water, oil,
and dirt repellency. Id., column 5, lines 49-51. Appellants identify silicone oil
adherence during silicone oil tamponade of the eye as a known problem that affects
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