Appeal 2007-1366
Application 90/005,090
1 One having ordinary skill in the art would have fully understood the
2 chemistry of this reaction. In particular, that person would have understood
3 that the tris siloxy component ((R3SiO)3) in the product comes from the silyl
4 moiety (R3Si) provided by the R3SiX reactant. In Quaal’s Example 1, there
5 are two R3SiX reactants: (1) (CH3)3SiCl (TMCS) and (2) (CH3)3SiOCH3.
6 Both provide the same silyl moiety ((CH3)3Si) and both meet the Quaal’s
7 definitions for R3SiX. One having ordinary skill in the art would have
8 predicted and expected from Quaal’s general teaching and an understanding
9 of the chemistry of the Quaal’s cohydrolysis reaction that TMCS alone
10 would provide the necessary silyl moiety. Making TRIS by the cohydrolysis
11 of MAS and TMCS alone would have been obvious.
12 Patentee also notes that Quaal does not expressly describe forming
13 TRIS by adding the reactants to 3-10 volumes of water. Quaal, however,
14 provides an operative guideline for the amount of water to be used: “The
15 amount of water employed is not particularly critical except that enough
16 should be employed for the hydrolysis reaction to proceed at a satisfactory
17 rate.” Quaal, 1:50-53. Thus, it is within the skill of those working in the art
18 to determine the appropriate amounts of water for use in making TRIS. The
19 statement as to the amount of water does not distinguish Patentee’s method
20 of making TRIS from Quaal’s method in an unexpected or unobvious way.
21 Patentee also notes that Quaal uses a water-solvent mixture in the
22 hydrolysis reaction rather than water alone as required by Claim 1. Quaal,
23 while preferring to use a solvent, characterizes the solvent as “not essential
24 to the process.” Quaal, 1:55. Thus, the making of TRIS without the use of
25 a solvent is suggested, is within the ordinary skill in the art, and would have
26 been obvious.
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