COMMISSIONER'S DECISION
Division; Double Patenting - Siloxanols Used to Render Materials Hydrophobic
This is a divisional application. The issue was whether or not the present
method is directed to a different invention from that deemed in the parent,
which had issued to patent. It was found that the present claims define an
invention separate and distinct from that defined in the claims of the parent.
Final Action: Withdrawn
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This decision deals with a request for review by the Commissioner of
Patents of the Examiner's Final Action dated February 15, 1977, on
application 226819 (Class 117-113). The application was filed on May 13,
1975, in the name of Richard N. Lewis, with the title "Method For Modifying
Surface Of Inorganic Substrate." The Patent Appeal Board conducted a
Hearing on September 13, 1978, at which Mr. M. Marcus represented the
applicant. Also in attendance was the United States patent counsel, Mr. L. Ford.
This application is a division of application 159,897 (now patent 997363),
and is directed to modifying the surface of an inorganic substrate to
render such surface hydrophobic. It comprises heating the substrate in
the presence of an alpha-alkoxy-omega-siloxanol, R'0(R2S10)xH. The inorganic
substrate so formed is novel in that it has its surface modified by being
hydrophobic.
In the Final Action the examiner refused the application because, in essense,
it was his opinion that only one invention was described in the original
disclosure as filed. He argued, intend that only one patent may issue
for one invention, utility is not separable from invention, and the granting
of a patent for a utility disclosed in an existing patent would be in
effect the grant of a second patent to the same subject matter. This would
result in the extension of the monopoly already granted in the applicants
patent.
In response to the Final Action the applicant went into greet detail in
an attempt to show that he was claiming an invention in the present applica-
tion which is separate and complete from the monopoly grant of his patent
claims that resulted from the parent application. He also argued that
"the claims presented herein are not validly rejectable in view of the
teachings of his prior patent," and "the claims presented herein are not
unpatentable 'method of use' claims."
At the Hearing Mr. Marcus argued to the effect that, in his view, the
invention defined in the present claim is clearly described in the present
disclosure, and the same description can be found in the original application.
He then proceeded to discuss the pertinent parts of the disclosure.
The consideration before the Board is clearly one of deciding whether or
not the invention defined in the present claims is fully
described in the disclosure, and is separate from the monopoly grant of
the patent.
The disclosure of the patent is directed to alkoxysiloxanols and the process
of preparing same. Claim 4 reads:
A process for preparing an alpha-alkoxy-omega-siloxanol
having the formula R'O(R x S l O)x H which comprises reacting
in the substantial absence of a basic catalyst, a cyclic
polysiloxane with a primary or secondary alcohol of the
formula R'OH in which R is selected from the group
consisting of a monovalent hydrocarbon radical, a halo-
genated monovalent hydrocarbon radical and a cyanoalkyl
radical having up to 8 carbon atoms, R' is selected from
the group consisting of alkyl radicals, cycloalkyl
radicals, alkenyl radicals, aralkyl radicals and substituted
derivatives thereof having up to 20 carbon atoms and x
is an integer of from 2 to 10 in a mol ratio of alcohol to cyclic
poly-siloxane of at least 2:1 and a temperature up to the
reflex temperature of the alcohol.
The present application is directed to a process for producing an organic
substrate having a hydrophobic surface. Claim 1 reads:
A process for producing an inorganic substrate having a sub-
stantially hydrophobic surface which comprises: applying
an alpha-alkoxy-omega-siloxanol to the substrate; and there-
after heating the substrate to a temperature sufficient to
render said surface substantially hydrophobic, wherein the
alpha-alkoxy-omega-siloxanol has the formula R'O(R2S l O)x H,
in which R is selected from the group consisting of hydrocarbon
radicals, halogenated hydrocarbon radicals and cyanoalkyl
radicals having up to 8 carbon atoms, R' is the radical of
an alcohol having up to 20 carbon atoms, and x is an integer
of from 2 to 10.
The specific question is whether or not a second invention is described
and claimed.
One of the uses of the compound in the patent was given as an "antistructure
agent" or softener.Example 14 on page 10 gives a different use and, in our
view, an unobvious one, because it is directed to a "hydrophobic" property
as opposed to the "antistructuring" property. It reads:
Six drops of CH3OD3H were applied to the surface of a
clean glass plate. After 10 minutes at room temperature
the surface was washed off with acetone and found not to
be water repellent. A second glass plate was treated with
six drops of CH3OD3H and heated 15 minutes at 105·C. The
liquid had evaporated and the surface was found to be some-
what water repellent; water drops on the surface formed a
contact angle of about 60·. A third glass plate was treated
with 6 drops of CH3OD3H and heated for 30 minutes at 150·C.,
whereby it became water repellent; water drops formed contact
angles of about 70· on the surface.
This clearly describes the utility of the invention defined in the present
claims. We are therefore satisfied that the claims define an invention
separate and distinct from that defined in the patent.
The situation in this case can be distinguished from a previous decision of
the Commissioner (POR May 2, 1978), which was discussed at the Hearing, because
in that case no second invention was described in the parent application.
We recommend that the decision in the Final Action to refuse the application
be withdrawn.
J.F. Hughes
Assistant Chairman
Patent Appeal Board, Canada
I hare studied the prosecution of this application and reviewed the
recommendation of the Patent Appeal Board. I concur with the recommend-
ation of the Board and accordingly withdrawn the Final Action.
J.H.A. Gariepy
Commissioner of Patents
Dated at Hull, Quebec
this 4th. day of October, 1978