Ex Parte Shelton - Page 5



            1   compounds, (8) pigments and (9) combinations thereof.  Specification,                             
            2   page 6, lines 3-6.                                                                                
            3          According to applicant, "[t]he preferred detackifier is a fumed silica."                   
            4   Specification, page 6, lines 16-17.                                                               
            5          Fumed silicas are commercially available, inter alia, under the                            
            6   registered trademark CAB-O-SILŪ.  Specification, page 6, lines 17-18.                             
            7          As will become apparent later in the opinion, CAB-O-SILŪ is a                              
            8   well-known material which those having ordinary skill in the art would have                       
            9   known is a "detackifier."                                                                         
          10           The "detackifier" is placed on a lure made of synthetic rubber in the                      
          11    form of a "detackifying coating."  Specification, page 7, lines 1 and 20-21.                      
          12           The detackifying coating may "further comprise a coating oil,                              
          13    preferably a silicone."  Specification, page 7, lines 1-2.                                        
          14           We are not told explicitly why "silicone" oil is preferred as the coating                  
          15    oil.                                                                                              
          16           Perhaps silicone oil is preferred because when molded, the synthetic                       
          17    rubber lures are said to have a chalky appearance, but when the silicone is                       
          18    applied the chalky appearance is said to disappear.  Specification, page 7,                       
          19    line 20 through page 8, line 2.                                                                   
          20                                                                                                      
          21                                     The rejections                                                   
          22           The examiner made three rejections.                                                        
          23           Rejection 1:  Claims 1-20 were rejected for failure to comply with the                     
          24    enablement requirement of 35 U.S.C. § 112.  The examiner was concerned                            
          25    that the specification did not enable a means for providing a coating that is                     
          26    "permanent."                                                                                      


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