Interference No. 103,995 Paper 29
Morel v. Sekhar Page 33
which
amended original claims 48 and 73 in the parent application 08/320,960, to
specify the colloidal components (from claim 64, minus colloidal silica). At
the same time, the “non-glassy” limitation has been removed from
claims 48 and 73 and all claims dependent thereupon. Claim 64 has been
cancelled.
New claims 74-75 parallel claims 48 and 73 in their original form with
the “non-glassy” limitation amended to substantially non-glassy. This
distinction, it is felt, more accurately describes the present invention in that it
is inevitable that some glass formation is to be expected in case
silicon compounds are present. However, it is believed that the limitation
“substantially non-glassy,” patentably distinguishes the present claims over
Sara U.S.P. 4,559,270 and over Weir U.S.P. 4,931,413.
Claim 76 parallels amended claims 48 and 73, except that it is a
coating composition claim. Claims 77-82 represent one species of claims
48 and 76 in method and composition format.
[The ‘115 file, Paper 17, pp. 5-6, emphasis added.]
70. A second preliminary amendment filed April 22, 1997 in the ‘115 application
cancelled claims 48-63 and 65-76 “without prejudice to refiling of such claims in one or
more continuation applications” (the ‘115 file, Paper 23).
Thus, Sekhar both apparently acknowledged that “it is inevitable that some glass
formation is to be expected in case silicon compounds are present” and separately carved
out claims to compositions and methods involving use of silicon compounds (see fact 69
above). Furthermore, the ‘115 application describes production of an impervious silica
skin (i.e., glassy material) at p. 13, ll. 8-17 [which corresponds to c. 6, ll. 50-59 of Sekhar
‘513] (See the discussion at pp. 22-24 above). Therefore, contrary to Morel’s position
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