Ex parte LEITCH et al. - Page 4

              Appeal No. 96-0937                                                                                         
              Application 08/203,723                                                                                     

              silicone fluid and water, of Bolich N658.  Parallel disclosure is set forth in Bolich N646 at              
              column 21, line 21-column 24, line 28 (silicone macromer-containing copolymer);                            
              column 16, line 35-column 17, line 4 (volatile silicone fluids); the examples (water) and                  
              specifically Example IV.                                                                                   
                     The dispute in this appeal centers on whether the Bolich references describe                        
              compositions containing a silicone macromer-containing copolymer, volatile silicone                        
              fluid, water, and the nonvolatile plasticizer required by claim 1(a)(iii).  The examiner                   
              has presented an ever-shifting position in this regard.  The first Office Action issued by                 
              the examiner in this application on May 20, 1994, was a final rejection which merely                       
              referred to Examples I-X of Bolich N646 and Examples I-XXI of Bolich N658.  The                            
              examiner did not explain in what manner any one of these examples describes a                              
              composition containing the components required by the claims on appeal.  Rather, the                       
              examiner merely stated that these examples “reads [sic] on the claimed invention.”  See                    
              page 4 of Paper 13 mailed May 20, 1994.  In responding to this aspect of the final                         
              rejection on November 18, 1994, appellants argued at page 4 that none of the cited                         
              examples of Bolich N646 or Bolich N658 describes a composition that includes the                           
              claimed nonvolatile plasticizer.  The examiner attempted to clarify the rejection in the                   
              Advisory Action (Paper No. 15, mailed November 30, 1994), directing attention to the                       


Page:  Previous  1  2  3  4  5  6  7  8  9  10  11  Next 

Last modified: November 3, 2007