Ex parte STIEGMAN - Page 5




          Appeal No. 1997-1667                                                        
          Application No. 08/226,819                                                  

          independently in this reference which would have suggested                  
          somehow modifying the teachings thereof in such a manner as to              
          yield products of the type defined by the appealed claims.                  
               Alternatively, we are cognizant of the examiner’s                      
          statement on page 7 of the answer that, “[c]oncerning Baiker                
          alone, the failure of the reference to explicitly discuss                   
          certain [here claimed] features is not persuasive [of                       
          patentability] since it does not mean that the materials of                 
          Baiker lack these properties.”  This statement reflects that                
          the examiner regards the products/materials of Baiker as                    
          corresponding to the appellant’s claimed products/materials                 
          and concomitantly that Baiker’s products/materials inherently               
          possess the properties recited in the appealed claims.                      
          However, the record before us contains utterly no evidence or               
          rationale in support of such a position.  See, for example, In              
          re Robertson, 169 F.3d 743, 745, 49 USPQ2d 1949, 1950-1951                  
          (Fed. Cir. 1999); Ex parte Skinner, 2 USPQ2d 1788, 1789 (Bd.                
          App. Pat. & Int. 1986).  On the other hand, the appellant’s                 
          declaration filed June 27, 1996 under 37 CFR  1.132 evinces                
          that the products/materials of Baiker do not correspond to and              



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