Appeal No. 95-3933
Application No. 08/063,206
Appellants' claimed invention is directed to a method of
making a vinylether functional siloxane comprising the recited steps.
Appealed claims 1-3, 23 and 26-29 stand rejected under
35 U.S.C. § 103 as being unpatentable over Brown in view of
Burzynski.
Upon careful review of the opposing arguments presented on
appeal, we will not sustain the examiner's rejection.
The threshold issue on appeal is the effectiveness of
appellants' affidavit under 37 CFR § 1.131, dated
November 21, 1994, in removing Brown as a prior art reference.
It is the examiner's position that the affidavit does not
effectively remove Brown as a prior art reference because the
affidavit shows a reduction to practice of claimed step (I) with
alcohol as an additional reactant. According to the examiner,
"[t]here is no evidence in the Affidavit that a method comprising
a reaction of components a, b and c recited in step (I) of claim
1 without the addition of an alcohol was reduced to practice
before the Brown et al[.] effective date" (page 7 of Answer).
The examiner's reasoning is not on sound legal footing
because it is well settled that an applicant need prove priority
of invention of only that portion of his claimed invention that
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