Appeals 2006-2874 and 2006-2747
Applications 08/544,212 and 09/287,664
Patent 5,401,305
1 monobutyltin trichloride; col. 6, line 20), (2) TEOS, and (3) TEP, (which is
2 triethyl phosphite; col. 6, line 21). See Examples 1 and 2. Also described is
3 the use of (1) MBTC, (2) TEOS, and (3) water. See Example 3.
4 Based on our reading of the underlying specification and giving the
5 claim its broadest reasonable interpretation consistent with the specification,
6 it is our view that the limitation in question is a "proviso" limitation
7 restricting the process only when (1) the precursor is a tin oxide precursor
8 and (2) the accelerant includes water.
9 Claim 28 does not require the presence of water when the precursor is
10 a tin oxide precursor. The proviso comes into play only when water is used
11 in combination with a precursor of tin oxide. A similar analysis applies with
12 equal force with respect to claim 31.
13 Only claim 30 requires the presence of a silicon oxide. If claim 30 is
14 unpatentable on the merits, then so are claims 28-29 and 30-31.
15
16 Unpatentability of claims 28-32 (Appeal 2006-2747) on the merits
17 In our opinion, claims 28-32 are unpatentable on the merits.
18
19 Scope and content of the prior art
20 Appellants cannot deny that the prior art describes compositions
21 which can be made using a precursor of silicon oxide. See (1) Lagendijk
22 and (2) Gordon '316 (Table D, compounds 1-3).
23 Appellants cannot deny that the prior art describes compositions
24 which can be made using a precursor of tin oxide. See Gordon '316 [Table
25 D, compound 13 (tetramethyl tin)].
25
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Last modified: September 9, 2013