Appeal No. 1999-2410 3
Application No. 08/664,462
rejection.
The Rejection over Merrill
It is the examiner’s position that, “[t]he claimed primer appears to be a conventional
phenyl-substituted siloxane gum primer.” See Answer page 3. As explained in the Answer,
“[t]he Examiner has never asserted that Merrill teaches phenyl silicones as primers. Merrill
teaches that methyl silicones act as primers for methyl based silicone psa’s. Nevertheless, a
person having ordinary skill in the art would have expected phenyl based silicones to
function in the same way for phenyl based silicones.” See Answer, page 5.
The fallacy in the examiner’s logic is that as admitted by the examiner, there is no
teaching in Merrill of a primer composition comprising a cross-linked phenyl-substituted
siloxane gum as required by the claimed subject matter. Indeed, the examiner has not even
found that crosslinked phenyl-substituted siloxane gums are known primers. Stated
otherwise, the premise of the examiner assumes a fact not in evidence.
Accordingly, as to the rejection of each of the claims before us, it is well settled that
the examiner must show reasons that the skilled artisan with no knowledge of the claimed
invention would select the elements from the cited prior art reference in the manner
claimed. We determine that there is no reason, suggestion, or motivation to select a
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