Appeal No. 1996-3676
Application No. 08/284,982
phenyl groups are cross-linked by alkylene groups in an ortho-
position with two to ten carbon atoms" (column 2, lines 9-14).
In order to remedy this deficiency in the Josowicz
disclosure, the examiner relies upon Hackh's for disclosing
"silicone rubber to be well-known for its use as protective
coating material for wires" (page 3 of Answer). However,
appellant explains at pages 5-8 of the Brief that the silicone
rubber coating disclosed by Hackh's does not result in the
claimed "chemical adsorption film comprising an alkyl group or
an alkyl fluoride group bonded to the body of the metal wire
by covalent siloxane bonds." The examiner does not dispute
appellant's explanation but offers the legal conclusion that
"it would nevertheless be obvious to one of ordinary skill in
the art to attach the coating by a covalent bond . . .
[because] [t]he covalent bond is chemical in nature and would
be expected to be stronger than a physical bond" (page 6 of
Answer). However, the examiner fails to provide the requisite
teaching or suggestion in the prior art for making the
necessary modifications to the collective teachings of
Josowicz and Hackh's to arrive at the claimed invention. At
best, the examiner has simply described a possible advantage
-4-
Page: Previous 1 2 3 4 5 6 7 Next
Last modified: November 3, 2007