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 That rejection has been withdrawn.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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