Appeal No. 1997-0186
Application No. 08/314,568
modification as would be obvious to those of ordinary skill in
the art in view of the disclosure of Calingaert).
Therefore, contrary to appellants' arguments, it was
proper for the examiner to rely on the claims of U.S. Patent
No. 5,244,853 to Wang in combination with the disclosure of
Johnstone in a rejection based on obviousness-type double
patenting. For this reason, the rejection is affirmed.
C. Rejection under 35 U.S.C. § 112, second paragraph
The rejection under 35 U.S.C. § 112, second paragraph, is
based on an interpretation of chemical nomenclature.
Specifically, claim 3 is said to be indefinite because
"tetraalkyl silicate" finds no support in the "alkoxy silane"
of claim 1 since "tetraalkyl silicate" does not contain any
alkoxy groups. See Answer, p. 4.
An examination of the specification reveals that (p. 5):
The alkoxy silane is of the formula R Si(OR') with
n 4-n
n ranging, for example, from 0 to 3, where R and R'
are also alkyl (e.g., C to C alkyl).1 6
Representative compounds include tetraethyl
silicate, tetramethyl silicate, tetrabutyl silicate,
and dimethoxydiphenylsilane.
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