Appeal No. 2000-1078
Application No. 08/836,009
defined by the appealed claims. In particular, these claims
require compounds which have at least one RN radical and thus, at
least one -Si-C-O- linkage or unit and which do not have a -Si-O-
C- linkage or unit. On the other hand, the Simmons or British
reference compounds specifically identified in the answer possess
at least one -Si-O-C- linkage or unit but do not have a -Si-C-O-
linkage or unit. Moreover, we have found no prior art compounds
which satisfy the compound-requirements of the appealed claims in
our own independent study of Simmons and the British reference.
Under these circumstances, the Section 102 rejection of claims
1-5 as being anticipated by Simmons or the British reference also
cannot be sustained.
Concerning the Section 103 rejection, the examiner has
advanced no reasoned exposition of how and why an artisan with
ordinary skill would have modified the compounds of Simmons or
the British reference in such a manner as to result in compounds
of the type defined by the appealed claims. It follows that the
examiner has failed to carry his initial burden of establishing a
prima facie case of obviousness. In re Oetiker, 977 F.2d 1443,
1445, 24 USPQ2d 1443, 1444 (Fed. Cir. 1992). Again, our
independent study of Simmons and the British reference reveals
inadequate support for a prima facie case of obviousness.
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