Ex parte LEITCH et al. - Page 9




              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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