Appeal No. 1998-1159
Application 08/642,019
With respect to the ground of rejection under § 103(a), it is well settled that a prima facie case
of obviousness is established by showing that some objective teaching, suggestion or motivation in the
applied prior art taken as a whole and/or knowledge generally available to one of ordinary skill in the art
would have led that person to the claimed invention as a whole, including each and every limitation of
the claims, without recourse to the teachings in appellants’ disclosure. See generally, In re Rouffet,
149 F.3d 1350, 1358, 47 USPQ2d 1453, 1458 (Fed. Cir. 1998); Pro-Mold and Tool Co. v. Great
Lakes Plastics Inc., 75 F.3d 1568, 1573, 37 USPQ2d 1626, 1629-30 (Fed. Cir. 1996); In re Fine,
837 F.2d 1071, 1074-76, 5 USPQ2d 1596, 1598-1600 (Fed. Cir. 1988); In re Dow Chem. Co.,
837 F.2d 469, 473, 5 USPQ2d 1529, 1531 (Fed. Cir. 1988); In re Warner, 379 F.2d 1011, 1014-
17, 154 USPQ 173, 175-78 (CCPA 1967).
The examiner’s position is based on the erroneous view that the definitions of members R1 and R2
of the formula set forth in claim 1 “are alkyl radicals of 1 to 6 carbon atoms which read on phenyl groups
which contain 6 carbon atoms,” because an “alkyl” radical is not a “phenyl” radical and it is clear from the
written description in appellants’ specification with respect to these formula members that appellants did
not define “alkyl” to include “an aryl group such as phenyl” (page 7). See generally, In re Zletz, 893 F.2d
319, 321-22, 13 USPQ2d 1320, 1322 (Fed. Cir. 1989), (“During patent prosecution the pending claims
must be interpreted as broadly as their terms reasonably allow. When the applicant states the meaning that
the claim terms are intended to have, the claims are examined with that meaning, in order to achieve a
complete exploration of the applicant’s invention and its relation to the prior art. [Citations omitted.]”).
Furthermore, Groenhof discloses mixing a polydimethylsiloxane oil with a
phenylmethylsiloxane/dimethylsiloxane copolymer, characterized as a gum (e.g., col. 1, line 64, to col. 3,
line 8, col. 3, lines 32-33, and col. 4, lines 42-44), which copolymer does not fall within the structural
formula in appealed claim 1. While Keil discloses that the “polydiorganosiloxane” of 10-100 centistokes
can be prepared by mixing two such polysiloxanes with different viscosities (col. 3, line 51, to col. 4, line
3), it is not apparent from this record that this teaching alone would have reasonably provided a suggestion
leading one of ordinary skill in this art to select the polysiloxanes specified by appealed claim 1 and blend
the same to arrive at the polydispersity for the blend specified in claim 1. Thus, the blend of Keil as used in
the compositions disclosed therein or as substituted for the polydimethylsiloxane oil of Groenhof would not
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