Appeal No. 2003-1684
Application No. 09/508,080
containing reactive silane to possess a specific molecular
weight distribution defined by proportions T1 and T2. Regarding
this limitation, the examiner alleges that the principal prior
art reference, namely Bank, describes this limitation.1 (Answer,
page 4.)
We note, however, that the examiner has failed to identify
sufficient evidence or scientific reasoning to support the
theory that Bank discloses, or would have suggested to one of
ordinary skill in the art, a partial hydrolysate satisfying the
recited molecular weight distribution. While the examiner does
refer to Bank’s Table 1, column 3, lines 25-41 and 56-66, and
column 7, lines 16-38, there is no accompanying explanation on
how these disclosures in fact support the examiner’s theory.
(Answer, pages 4 and 11.)
The examiner also appears to rely on a theory of
optimization of result-effective variables by routine
experimentation. (Answer, page 8.) The problem with this
approach in this case is that the examiner has not pointed to
any evidence establishing that optimizing the prior art in
accordance with the prior art teachings would necessarily result
in a partial hydrolysate having the recited molecular weight
1 The appellants, on the other hand, dispute the examiner’s
determination. (Appeal brief filed Jan. 15, 2003, paper 26, p.
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