Appeal No. 94-0995
Application No. 07/662,722
alkoxy-functional silicone resin whereas, in claim 1, that
component is an hydroxylated silicone resin. Second, the
instant specification acknowledges that appellants' component
(B), the hydroxylated silicone resin, was known in the art at
the time the invention was made (specifi-cation, page 11,
first paragraph). Third, substitution of Grape's acyloxy or
alkoxy-functional silicone resin with the known hydroxylated
silicone resin is within the skill of the art (Paper No. 7,
paragraph bridging pages 3 and 4). This, according to the
examiner, establishes a prima facie case of obviousness.
Fourth, the burden of persuasion shifts to appellants to rebut
the prima facie case with a side-by-side comparison
establishing that hydroxylated silicone resin gives rise to
unexpectedly superior results compared with acyloxy or alkoxy-
functional silicone resin.
The examiner's analysis in the Final Rejection was
flawed. That appellants' component (B), the hydroxylated
silicone resin, was known in the art at the time the invention
was made, and that it was within the skill of the art to make
the substitution of materials proposed by the examiner, begs
the question. The real question is why? Why would a person
-4-
Page: Previous 1 2 3 4 5 6 7 8 9 10 11 12 13 14 Next
Last modified: November 3, 2007