Appeal No. 94-0995
Application No. 07/662,722
compositions which are very different from the composition of
Grape. Appellants reason that a person having ordinary skill
in the art would not have been motivated to modify Grape's
composition in the manner proposed by the examiner, given the
context in which the hydroxy- lated silicone resin is used by
Favre or Blizzard. According to appellants, the collective
teachings of Grape, Favre, and Blizzard make it clear that
acyloxy or alkoxy-functional silicone resin and hydroxylated
silicone resin are not art-recognized equivalents or
interchangeable materials.
DISPOSITION OF THE EXAMINER'S REJECTIONS
In the Examiner's Answer (Paper No. 14), the examiner
does not repeat or refer to the rejection of claims 1 through
14 under 35 U.S.C. § 103 as unpatentable over Grape alone.
The only reasonable interpretation which these facts permit is
that the rejection over Grape has been dropped. Paperless
Accounting Inc. v. Bay Area Rapid Area Transit Sys., 804 F.2d
659, 663, 231 USPQ 649, 652 (Fed. Cir. 1986).
In the Answer, the examiner enters the following new
grounds of rejection: (1) claims 1 through 14 under 35 U.S.C.
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