Ex parte BILKADI - Page 11




          Appeal No. 94-3812                                                          
          Application 07/857,701                                                      
          Moreover, the submission of the Hoechst Celanese product sheet              
          does not support appellant's position.  Suffice it to say that              
          the compounds on the product sheet represent neither compounds              
          as claimed in claims 30 and 34 nor compounds as described at                
          page 11 of the specification.                                               
               We agree with appellant with respect to the recitation in              
          claim 34 regarding the absence of acryloxy silanes and epoxy                
          silanes.  We find the disclosure at page 5, lines 24 through                
          30 reasonably conveys to persons of ordinary skill in the art               
          that at the time appellant filed his application, he                        
          recognized that acryloxy and epoxy silanes were undesirable                 
          because they were not resistant to steam and extended exposure              
          to moisture. Accordingly, the limitation in claim 34 excluding              
          them is "described" in the sense of 35 U.S.C. § 112, first                  
          paragraph.                                                                  
               We find no merit in the examiner's position with respect               
          to either the so-called "dangling" valence of the substituent               
          "-NR -" in claims 30 and 34 or with respect to the value of2                                                                       
          "m" in claims 30 and 34.   We consider it to be apparent that6                                                   

           We note in passing that in claim 34, "m" is defined as6                                                                      
          ranging both from 1.05 to 5.95 and from 1 to 6.  Indeed,                    
          after the recitation in claim 34 concerning the absence of                  
          silanes, the values for all the claimed substituents are                    
                                         11                                           





Page:  Previous  4  5  6  7  8  9  10  11  12  13  14  15  16  17  18  Next 

Last modified: November 3, 2007