Appeal No. 96-0937
Application 08/203,723
relied upon by the examiner, they are disclosed in the “surfactant” section of the
specification of Bolich N646 at column 9, lines 1-44. Appellants then went on to argue
why that disclosure did not negatively affect the patentability of the claims on appeal.
The examiner filed a Supplemental Examiner’s Answer on August 21, 1995.
However, that paper did not clarify how either of the Bolich patents describes a
composition according to the claimed invention including the required nonvolatile
plasticizer. A second Reply Brief was filed (Paper No. 20, September 25, 1995) which
reiterated appellant’s position which was only noted by the examiner and not
responded to in substance. See Paper No. 21, mailed October 24, 1995.
As the record now stands, we have no idea what specific compound or
compounds disclosed in either Bolich N646 or Bolich N658 the examiner considers to be
the nonvolatile plasticizer required by the claims on appeal. Nor do we have a clear
indication on what basis the examiner believes that either Bolich reference describes a
composition having the four components required by the claims on appeal. As seen
from the above analysis, the examiner’s position has continually shifted with each
response by appellants until the second Reply Brief was filed by appellants on
September 25, 1995. That Reply Brief was met, in substance, by silence from the
examiner. Under these circumstances, we do not find that the examiner’s initial burden
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