Appeal No. 96-0937
Application 08/203,723
silicone fluid and water, of Bolich N658. Parallel disclosure is set forth in Bolich N646 at
column 21, line 21-column 24, line 28 (silicone macromer-containing copolymer);
column 16, line 35-column 17, line 4 (volatile silicone fluids); the examples (water) and
specifically Example IV.
The dispute in this appeal centers on whether the Bolich references describe
compositions containing a silicone macromer-containing copolymer, volatile silicone
fluid, water, and the nonvolatile plasticizer required by claim 1(a)(iii). The examiner
has presented an ever-shifting position in this regard. The first Office Action issued by
the examiner in this application on May 20, 1994, was a final rejection which merely
referred to Examples I-X of Bolich N646 and Examples I-XXI of Bolich N658. The
examiner did not explain in what manner any one of these examples describes a
composition containing the components required by the claims on appeal. Rather, the
examiner merely stated that these examples “reads [sic] on the claimed invention.” See
page 4 of Paper 13 mailed May 20, 1994. In responding to this aspect of the final
rejection on November 18, 1994, appellants argued at page 4 that none of the cited
examples of Bolich N646 or Bolich N658 describes a composition that includes the
claimed nonvolatile plasticizer. The examiner attempted to clarify the rejection in the
Advisory Action (Paper No. 15, mailed November 30, 1994), directing attention to the
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