Appeal No. 96-0613
Application No. 08/226,539
the epoxy resin was omitted (Comparative Example 6). However,
JPA ‘942 fails to disclose or teach the function of component
(b), the copolymer epoxy bond-containing organopolysiloxane
that the examiner urges is “equivalent” to the epoxy-siloxane
release agent of Griswold. Accordingly, we find no suggestion
or motivation to modify the applied references in the manner
proposed by the examiner.
We conclude that the examiner’s legal conclusion of
obviousness is not supported by the facts and thus cannot
stand. In re Warner, 379 F.2d 1011, 1017, 154 USPQ 173, 178
(CCPA 1967). Accordingly, the examiner’s rejection of claims
7 through 14 under 35 U.S.C. § 103 as unpatentable over JPA
‘942 in view of Griswold is reversed.
Appealed claims 18 through 27 stand rejected over the
same combination of references as discussed above further in
view of JPA ‘655. The examiner applies JPA ‘655 to show that
the process of preparation recited in claim 18 (claim 18 is
dependent on claim 7) is “known in the art” (answer, page 5).
However, the examiner has not pointed to any disclosure or
teachings in JPA ‘655 that would remedy the deficiencies
discussed above with regard to the combination of JPA ‘942 and
6
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