Appeal No. 1996-3816 Page 14
Application No. 08/293,331
forming a hydrogen silsesquioxane resin film on the
surface of a substrate and
converting the hydrogen silsesquioxane resin into silicon
oxide ceramic by heating the resin film-bearing substrate in
an inert gas atmosphere at 250EC. up to, but not including,
500EC. until the content of silicon-bonded hydrogen in the
silicon oxide product has reached # 80% of the content of
silicon-bonded hydrogen in the hydrogen silsesquioxane resin.
During prosecution of the parent application of the
present divisional application, the examiner determined that
the process claims of U.S. Patent 5,380,567 and the product-
by-process claims in question are patentably distinct from one
another for the restriction purposes. The examiner now takes
the position that the process claims of U.S. Patent 5,370,904
(Mine et al.), which are less close to the product-by-process
claims in the present application than the process claims of
U.S. Patent 5,380,567, are not patentably distinct from the
product-by-process claims. Under this circumstance, it is my
opinion that the examiner is estopped from taking a position
different from a previous one which resulted in filing of the
present divisional application. When applicant relies on the
examiner’s restriction requirement to his detriment, the
examiner should be precluded from taking a position contrary
to his initial position. This intent, in my view, is
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