Appeal No. 95-3933
Application No. 08/063,206
is disclosed, or rendered obvious, by the applied reference.
In re Stempel, 241 F.2d 755, 759, 113 USPQ 77, 81 (CCPA 1957).
In the present case, the examiner expressly acknowledges that
"Brown et al[.] do not teach reacting an alkoxy silane with water
in the presence of an acidic condensation catalayst [sic], as
recited in step (I) of instant claim 1" (page 3 of Answer).
Since the examiner relies on Brown for claimed steps (IV)-(VI),
and makes no argument that the Rule 131 Affidavit does not show
reduction to practice of claimed steps (IV)-(VI) prior to the
effective date of Brown, it can be seen that the Affidavit
establishes priority of invention for that portion of the
presently claimed invention that is disclosed by Brown.
Also, based on the Burzynski disclosure, we find that
claimed steps (I)-(III), not requiring alcohol as a reactant,
would have been an obvious modification of the reaction shown in
the Affidavit to one of ordinary skill in the art. In re
Stempel, 241 F.2d at 759, 113 USPQ at 81; In re Clarke, 356 F.2d
987, 992, 148 USPQ 665, 670 (CCPA 1966).
Since we agree with appellants that the Rule 131 Affidavit
of November 21, 1994, effectively removes the reference to Brown
as prior art, it logically follows that we must reverse the
examiner's rejection under 35 U.S.C. § 103 over Brown in view of
Burzynski.
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