Ex parte DANIEL J. HALLORAN - Page 8




            Appeal No. 95-1302                                                                             
            Application 07/729,281                                                                         


            polydimethylsiloxane resin” disclosed by Lamb.  It is unclear,                                 
            however, whether the examiner relies on the former or the latter                               
            in rejecting the claims before us.  Apparently, the examiner                                   
            believes that Lamb describes the organosilicon compound recited                                
            in claim 17.  The statement of rejection, however, lacks clarity                               
            because the examiner does not state whether reliance is placed on                              
            the “silicone polymer” and/or the “hydrophobic cationic aqueous                                
            emulsion of a highly branched and crosslinked polydimethyl-                                    
            siloxane resin” disclosed by Lamb.                                                             
                  If the examiner relies on Lamb’s “silicone polymer” to fully                             
            meet the claimed subject matter, we believe that such reliance is                              
            misplaced.  The general term “silicone polymer” lacks the                                      
            requisite specificity to support a rejection under 35 USC  102                                
            of claims 17 and 19 through 26, which recite specific organo-                                  
            silicon compounds depicted by structural formula.                                              
                  It is apparent from the appeal Brief that applicants assume                              
            the examiner relies on Lamb’s “hydrophobic cationic aqueous                                    
            emulsion of a highly branched and crosslinked silicone polymer”                                
            in rejecting the claims on appeal.  That emulsion is described at                              
            column 2, lines 35 through 60 of Lamb, note particularly the                                   
            formula illustrated at column 2, line 41.  However, the examiner                               
            has not established, as a factual matter, that Lamb’s                                          

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