Appeal No. 95-2489
Application 07/826,207
Opinion
We have carefully considered the respective positions advanced by appellant and the examiner.
For the reasons set forth below, we will not sustain the examiner's rejection.
Block discloses an electroreheological fluid comprising a liquid phase having dispersed therein
electronic conductor particles such as a semiconductor (col. 1, lines 48-66). Block defines his
semiconductor as being a “material through which electricity is conducted by means of electrons (or holes)
rather than by means of ions” (col. 1, line 66 to col. 2, line 1). While the only examples of semiconductors
disclosed by Block are organic semiconductors, the examiner relies on the definition of “semiconductor”
in Grant & Hackh’s Chemical Dictionary to show that the term “semiconductor” includes silicon and that
the term “solar cell” includes crystalline or amorphous silicon. Inoue discloses an electroviscous fluid
comprising a fluid having dispersed therein fine particles consisting of an organic solid core surrounded by
a thin inner layer of an electroconductive material and a thin outer layer of an electric insulative material (p.
1 of the Inoue translation) while Pedersen discloses an electroviscous fluid comprising an insulative oily
medium wherein fibers of graphite are dispersed therein (col. 2, lines 18-24 and col. 3, lines 21-45).
4(...continued)
the second paragraph of 35 U.S.C. § 112, a rejection of claims 1-12, 19, 20, 22 and 23 under 35 U.S.C. § 103 over Block in
view of Inoue and Pedersen, and a rejection of claims 1-12 over Petrzhick in view of Inoue and Pedersen. With the
cancellation of claims 6 and 23 in an amendment after final (paper no. 15), the rejection under the second paragraph of
35 U.S.C. § 112 was rendered moot. In the answer, the examiner indicated that the rejection of claims 5 and 20 under the
second paragraph of 35 U.S.C. § 112 had been withdrawn as well as the rejection of claims 1-12 and 19 under 35 U.S.C.
§ 103. The examiner did not restate the rejection of claims 1-12, 19, 20, 22 and 23 under 35 U.S.C. § 103 as set forth in the
final rejection in her answer. Therefore, we presume that this rejection has been withdrawn. Where a ground of rejection
does not appear in the examiner's answer, the rejection is assumed to have been withdrawn. Ex parte Emm, 118 USPQ
180 (Bd. App. 1957). Accordingly, the only rejection before us for consideration is the new ground of rejection stated
in the answer.
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