Ex parte BIERNATH et al. - Page 5




                 Appeal No. 1999-0493                                                                                                                   
                 Application No. 08/649,504                                                                                                             


                 or, in some cases, from the nature of the problem to be solved.                                                                        
                 [Citations omitted].”  In re Dembiczak, 175 F.3d 994, 999, 50                                                                          
                 USPQ2d 1614, 1617 (Fed. Cir. 1999).  Broad conclusory statements                                                                       
                 regarding the teachings of the references are not “evidence” but                                                                       
                 the showing must be “clear and particular.”  In re Dembiczak,                                                                          
                 supra.                                                                                                                                 
                          The examiner finds that the room temperature-curable                                                                          
                 organopolysiloxane composition of Yoshino is useful as “electric                                                                       
                 insulation,” citing col. 6, ll. 15-16 (Answer, page 3).   The                                      2                                   
                 examiner makes no finding as to the utility of appellants’                                                                             
                 admitted prior art (Answer, pages 3-5), but implicitly the                                                                             
                 “known electronic assemblies” (Answer, page 4) use the room                                                                            
                 temperature curable silicone composition to produce a force                                                                            
                 bearing member, i.e., an electrical connector (see the                                                                                 
                 specification, page 1, l. 22-page 2, l. 13).  On this record, we                                                                       
                 find no “clear and particular” evidence or reasoning why one of                                                                        


                          2We note that Yoshino teaches a room temperature-curable                                                                      
                 organopolysiloxane composition “suitable for use as a material                                                                         
                 for imprinting or blocking of form” (col. 1, ll. 10-11),                                                                               
                 specifically “useful as a material for imprinting or blocking                                                                          
                 of teeth forms and inserts of external auditory canals,                                                                                
                 criminal identification, electric insulation, and so on.”  See                                                                         
                 col. 6, ll. 13-16.                                                                                                                     
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