Appeal 2007-1366
Application 90/005,090
1 example, Patentee notes that Quaal does not expressly describe making
2 TRIS from MAS and TMCS alone.7
3 One having ordinary skill in the art would have understood the
4 chemistry involved in Quaal’s process and would have expected that TRIS
5 could be made by hydrolysis of MAS and TMCS alone. Quaal teaches a
6 general reaction for making tris-siloxy acrylic silanes, such as TRIS, having
7 the general formula (R3SiO)3Si-R’-OOCC(R”)=CH2. This process involves
8 the cohydrolysis of two compounds, a compound having the formula
9 X3Si-R’-OOCC(R”)=CH2 and an excess of a compound of the type R3SiX.
10 Thus, Quaal’s basic process only requires cohydrolysis of two compounds.
11 Patentee also makes much of the fact that Quaal’s Example 1, which
12 is directed to making TRIS, does not teach making TRIS by cohydrolysis of
13 MAS and TMCS alone.
14 Quaal’s Example 1 describes the cohydrolysis of MAS and TMCS
15 and a third compound, (CH3)3SiOCH3. Example 1 in no way diminishes
16 Quaal’s general teaching of reacting two compounds and is totally consistent
17 with that teaching. A reference must be evaluated for all that it teaches, and
18 is not limited to its examples or preferred embodiments. Merck & Co. v.
19 Biocraft Labs., Inc., 874 F.2d 804, 807, 10 USPQ2d 1843, 1846 (Fed. Cir.
20 1989); In re Fracalossi, 681 F.2d 792, 794 n.1, 215 USPQ 569, 570 n.1
21 (CCPA 1982); In re Lamberti, 545 F.2d 747, 750, 192 USPQ 278, 280
22 (CCPA 1976). Additionally, Quaal’s general reaction may be represented
23 by the following equation:
24 X3Si-R’-OOCC(R”)=CH2 + R3SiX (in H20) ═> (R3SiO)3Si-R’-OOCC(R”)=CH2
7 As we stated above at p. 9 we have adopted Patentee’s construction of the
literal scope of Claim 1 as permitting only the cohydrolysis of MAS and
TMCS.
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