Appeal No. 2007-1487
Application 09/562,632
would add such silane agents to the aqueous compositions described in”
Kubitza (id. 5).
With respect to claim 8, Appellants contend Kubitza does not contain
any teaching to add an epoxy functional silane component to the
polyisocyanate component and the Examiner has not established why the
claimed product would be obvious by citing references.
Appellants contend the object of the claimed invention is to provide
an aqueous, two-component polyurethane system that exhibits improved
adhesion and corrosion resistance on metal surfaces, and the results of
showing of systems with and without an epoxy functional silane component
in Specification Example 1-4 demonstrate “better crosshatch adhesion” and
“better resistance to blistering” (id. 5, citing Specification 12, 14, 16, and
18). Appellants contend “the results could not be predicted from the
teachings of the references” (id. 5-6).
The Examiner responds that Morikawa’s compositions in Tables
4 and 5 do not include any examples showing the same composition with
and without the epoxy functional silane component and thus, the results in
Table 6 are inconclusive with respect to the “effect of silane coupling agent
on bonding strength” and adhesion (Answer 6-7).
The issue in this appeal is whether the Examiner has carried the
burden of establishing a prima facie case of obviousness under § 103(a) with
respect to claims 1 and 8.
This panel entered a decision in Appeal No. 2004-1131 on
June 29, 2004. In subsequent prosecution, Appellants amended claim 1 and
added new claim 8 to which the Examiner applied a different combination of
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