Appeal No. 1999-1907
Application No. 08/690,409
8 through 14, 18, 19, 21, and 22 on appeal stand rejected under
the first paragraph of 35 U.S.C. § 112, "because the
specification, while being enabling for addition curable
silicone material produced by Castall Inc under trade name
Castall S-1332, does not reasonably provide enablement for a
solvent-free polymer material." (Id. at pages 3-4.)
We reverse these rejections.
The examiner's position with respect to the rejection of
appealed claims 1 through 22 is as follows:
It appears from the specification that
composition of addition cured silicone material is
critical for the invention. However, the disclosure
fails to teach one of ordinary skill in the art the
composition of addition curable silicone material.
There are quite a few addition curable silicone
materials that are commercially known. Therefore, in
absence of providing composition of addition curable
silicone material, a person of ordinary skill in the
art would have to carry out burdensome experiments.
The disclosure discloses one commercial product
Castall S-1332. However it appears from the
specification and from the technical data sheet that
Castall S-1332 is not chemically identified and it is
a proprietary trade material. The owner of this
material can change the composition of that material
at any time. Therefore, in absence of providing
chemical nature of this material, the disclosure is
deemed to be insufficient for practicing this
invention.
(Examiner's answer, page 3.)
While it is not entirely clear from the statement of the
rejection and the explanation of the rejection quoted above as
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