Appeal No. 94-0995
Application No. 07/662,722
Japanese patent document, in the Japanese language or in the
English language, is not of record. Rather, the examiner
places reliance on what appears to be the print-out from a
computerized search request. The print-out is in the form of
an abstract.
Having reviewed the abstract, we find that this rejection
is clearly erroneous. The composition in appellants' claim 1
includes component (B), an hydroxylated silicone resin,
compared with a silane having at least three hydrolyzable
groups disclosed in the abstract of JP 53-130752A. The
examiner asserts that the claimed composition would have been
obvious in view of the prior art disclosure of a silane having
hydrolyzable groups, but the examiner offers no reasoning or
evidence whatsoever supporting that assertion. The examiner
provides no reasoning or evidence which would have led a
person having ordinary skill from "here to there," i.e., from
the prior art composition containing a silane having at least
three hydrolyzable groups to the claimed composition
containing an hydroxylated silicone resin.
The rejection of claims 1 through 14 under 35 U.S.C.
§ 103 as unpatentable over "JP 53-130752A" is reversed.
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