Appeal No. 97-0752
Application 08/354,304
in the statement of the rejection. Compare Manual of Patent
Examining Procedure (M.P.E.P.) 706.02(j); In re Hoch, 428 F.2d
1341, 1342 n.3, 166 USPQ 406, 407 n.3 (CCPA 1970) and Ex parte
Raske, 28 USPQ2d 1304-05 (BPAI 1993).
In any event, to the extent it is the examiner’s position
that appellants’ specification teaches that it is known in the
art to use silicone crumb material in particulate form to
transmit torque, the examiner’s position is not well taken. The
patents listed by appellants at the bottom of page 1 of the
specification indeed establish that cured silicone rubber
composition in crumb form, as called for in base claim 1, is per
se known. However, these patents do not teach appellants’ use of
this material, namely, to transmit torque when sufficiently
compressed.
The examiner’s reliance on In re Leshin to supply this
apparent deficiency in the prior art also is inappropriate. In
Leshin, the material in question, plastic, was selected for use
in the claimed device based on its known suitability for the
applicant’s intended purpose. Such is clearly not the case here
where, based on the record before us, only appellants have
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