Ex parte DANIEL J. HALLORAN - Page 9




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


                organosiloxane (column 2, line 41) is identical to any of the                                                                 
                organosilicon compounds illustrated by structural formula in                                                                  
                claim 17.  The examiner asserts that (1) both Lamb and applicants                                                             
                use “the same organosilicon compounds”, and (2) “[t]here is no                                                                
                structural difference” between the organosilicon compounds                                                                    
                recited in claim 17 and those disclosed by Lamb.  See the                                                                     
                Examiner’s Answer, page 3, last paragraph.  Those assertions,                                                                 
                however, amount to examples of ipse dixit reasoning.  Simply                                                                  
                stated, the examiner does not explain how she has determined that                                                             
                Lamb and applicants use “the same organosilicon compounds” or                                                                 
                that “[t]here is no structural difference” between these                                                                      
                compounds.  Nor does she provide any analysis, scientific                                                                     
                reasoning, or evidence to support that determination.                                                                         
                         The examiner’s rejection under 35 USC  102(e) is reversed.4                                                         

                                                                REVERSED                                                                      



                         4   The examiner previously entered a rejection of applicants’ claims under                                          
                35 USC  112, second paragraph, as indefinite. See Paper No. 6 mailed August 11,                                              
                1992. That rejection has been withdrawn. However, on return of this application                                               
                to the examining corps, the examiner may wish to revisit that rejection in light                                              
                of the third and fourth organosilicon compounds illustrated by structural formula                                             
                in claim 17. Specifically, see the appendix to the appeal Brief, claim 17, lines                                              
                10 through 16. On its face, it appears that those structural formulas are                                                     
                incorrect because, as drawn, the oxygen atoms do not have an appropriate site for                                             
                bonding. As stated by the examiner in Paper No. 6, “what are the oxygen atoms                                                 
                bonded to”? In this regard, note particularly that variables x, y, and z are                                                  
                integers.                                                                                                                     
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