Appeal No. 96-0937
Application 08/203,723
examples of the Bolich references and the methyl alkyl silicones which can be used as
the nonvolatile plasticizer in the claimed invention appear to form a reasonable basis
upon which a rejection under 35 U.S.C. §§ 102/103 can be made which would shift the
burden to appellants to establish in an objective manner that the 350 centistoke
polydimethyl siloxane fluid used in these examples does not meet solubility parameters
of claim 1 (a)(iii). See In re Best, 562 F.2d 1252, 1254, 195 USPQ 430, 432 (CCPA
1977).
We emphasize that the examiner should carefully consider the above identified
portions of the Bolich patents which describe the use of methyl alkyl silicones as
nonvolatile silicone fluids. This portion of the examiner’s analysis is very important in
view of the withdrawal of all rejections of claims 9, 10, and 19. These claims include
the preferred methyl alkyl silicone plasticizer of the present invention which, as set forth
above, appears to be described by Bolich N646 and Bolich N658. If so, the examiner
should consider reinstating the rejection of these claims.
In making these observations, we are aware of appellants’ arguments at page 4
of the second Reply Brief that Bolich N646 does not teach incorporating the silicone
copolyol into the silicone macromer-containing copolymer/volatile silicone phase of the
present invention. To the extent a similar argument might be relevant in analyzing the
compositions described in the above identified examples of the Bolich references, we
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