Ex parte OGAWA et al. - Page 2




                 Appeal No. 95-4065                                                                                                                     
                 Application No. 07/872,185                                                                                                             


                 main chain fixed onto a substrate surface by covalent -Si-                                                                             
                 bonds, with this chain including siloxane bonds oriented                                                                               
                 substantially vertically to the substrate surface (Brief, page                                                                         
                 2).  Claim 22 is illustrative of the subject matter on appeal                                                                          
                 and is reproduced below:                                                                                                               
                 22.  A chemically adsorbed film comprising a monomolecular                                                                             
                 film having a siloxane based main chain fixed onto a substrate                                                                         
                 surface by covalent - Si- bonds, wherein the siloxane based                                                                            
                 main chain includes siloxane bonds oriented substantially                                                                              
                 vertically to said substrate surface.                                                                                                  
                 The examiner has relied upon the following reference to                                                                                
                 support the rejection:2                                                                                                                
                 Yundt                       4,199,649           Apr. 22, 1980                                                                          
                          Claims 8, 9 and 22 stand rejected under 35 U.S.C. § 112,                                                                      
                 first paragraph, for the reasons set forth in paragraphs 15                                                                            
                 and 16 of ... Paper No. 16.” (Answer, page 3).  We reverse                                                                             
                 this rejection for reasons which follow.                                                                                               
                 OPINION                                                                                                                                




                          2Contrary to the examiner’s statement on page 2 of the                                                                        
                 Answer that "[n]o prior art are [sic, is] relied upon by the                                                                           
                 examiner in the rejection of claims under appeal.", the                                                                                
                 examiner relies upon Yundt on page 3 of the Answer "to show                                                                            
                 formation of monomolecular polysiloxane loops".                                                                                        
                                                                           2                                                                            





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