Appeal No. 96-0613
Application No. 08/226,539
basis in JPA ‘942 for the examiner’s conclusion that both
references “. . . deal with silicone resins which contain
epoxy functional silicone release agents.” (brief, pages 5-6).
“When it is necessary to select elements of various
teachings in order to form the claimed invention, we ascertain
whether there is any suggestion or motivation in the prior art
to make the selection made by the applicant.” In re Gorman,
933 F.2d 982, 986, 18 USPQ2d 1885, 1888 (Fed. Cir. 1991).
Although we agree with the examiner that the epoxy-functional
siloxane component (A) of Griswold functions as a release
additive to control adhesion (column 2, lines 55-60; column 3,
lines 42-51; column 4, lines 49-56), we do not find that JPA
‘942 discloses “clearly functional equivalent epoxy-siloxane
release agents” (answer, page 5). The examiner has not
pointed out any disclosure or teaching in JPA ‘942 that
discloses or suggests that the “copolymer epoxy bond-
containing organopolysiloxanes” of JPA ‘942 function as
release agents. Comparative Examples 5 and 6 on pages 14-15
of the JPA ‘942 translation do teach that “it was not possible
to remove the molding from the metal mold” when the silicone
resin component was omitted (Comparative Example 5) or when
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