Appeal No. 2000-1078
Application No. 08/836,009
The references relied upon by the examiner in his Section
102 and Section 103 rejections are:
Simmons et al. (Simmons) 3,147,179 Sep. 1, 1964
St. Joe Paper Co. 951,325 Mar. 4, 1964
(published Great Brittain Patent Application) (hereinafter
referred to as the British reference).
Claims 4 and 5 are rejected under the second paragraph of
35 U.S.C. § 112 for failing to particularly point out and
distinctly claim the subject matter which the appellants regard
as their invention. The examiner states that “equation (XII)
[of claim 4] is described in terms of R when there is an R3 but
not an R” and that “claim 4 uses RN both as ‘polyoxyalkylene
species’ in equations (I)-(VII) and as ‘a monovalent radical of
general formula (VIII)’ in equation (XII)’ [and] [u]sing the same
symbol RN to represent 2 different species in the same claim is
confusing” (answer, page 4).
Claims 1-5 are rejected under 35 U.S.C. § 102(b) as
anticipated by or, in the alternative, under 35 U.S.C. § 103(a)
as obvious over Simmons or the British reference. According to
the examiner, either of Simmons or the British reference “teaches
producing pulp by reacting fibrous materials (wood) with a
digesting chemical in the presence of organo-polysiloxanes
including several polysiloxane species disclosed by Applicant,”
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