Ex parte ACHENBACH et al. - Page 3




                  Appeal No. 1998-0138                                                                                                                     
                  Application 08/381,809                                                                                                                   

                                                               L        is a donor selected from the group consisting of                                   
                                                                        amines of  the formula NR”   wherein each R”                                       
                                                                                                          3                                                
                                                                        individually is hydrogen, alkyl, cycloalkyl, or                                    
                                                                        aryl; diamines; bipyridyl; phosphorus containing                                   
                                                                        ligands of the formulae PR”  and Ph P-(CH ) -3         2         2 n                          
                                                                        PPh  where n is 1 or 2; nitriles; and dienes; and                                  
                                                                             2                                                                             
                                                               M        is hydrogen, NH , an alkali metal, or an alkaline                                  
                                                                                            4                                                              
                                                                        earth metal;                                                                       
                                                      and mixtures thereof.                                                                                
                                    16.      A method of increasing the heat resistance of a silicon rubber prepared                                       
                                             by the addition of crosslinking of polysiloxanes containing two or more                                       
                                             alkenyl groups (1) with polysiloxanes containing two or more SiH                                              
                                             groups, (2) in the presence of a hydrosilylation catalyst, (3) said method                                    
                                             comprising:                                                                                                   
                                                      adding to one or more of (1), (2) or (3) an effective, heat-                                         
                                                      stabilizing amount of a heat-stabilizer comprising palladium or a                                    
                                                      palladium compound, wherein said palladium or said palladium                                         
                                                      compound exhibits substantially no hydrosil[yl]ation catalytic                                       
                                                      activity.                                                                                            
                           In the Answer, the examiner maintains the following grounds of rejection:                                                       
                           1.       The rejection of claims 5 and 16 under 35 U.S.C. § 112, ¶ 1, for failing to be                                         
                  supported by a written description for the limitation that the palladium compound “exhibits substantially                                
                  no hydrosilylation activity.”  Paper 15, p. 4.                                                                                           
                           2.       The rejection of claims 5-7, 13 and 16-19 under 35 U.S.C. § 103(a) as unpatentable                                     
                  over Kobayashi.   Paper 15, p. 4.2                                                                                                                    
                           The Answer also added the following new ground of rejection:                                                                    
                           3.       The rejection of claims 6, 7 and 18 under  35 U.S.C. § 112, ¶ 1, as being broader than                                 
                  the enabling disclosure.  Paper 15, p. 5.                                                                                                



                     22U.S. Patent 5,106,933, granted April 21, 1992, on application 07/535,448, filed June 8, 1990.                                      
                                                                            3                                                                              





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