Appeal 2007-1679
Application 11/041,470
not commensurate in scope with the claimed subject matter since the
examples are limited only to DMDES as the hydrolysate in accordance with
Formula I of the claimed invention, which embraces a plethora of distinct
compounds. For example, T1and T2 are alkoxy groups having from 1 to 10
carbon atoms that are not necessarily the same, and Z1 and Z2 are alkyl
groups with 1 to 10 carbon atoms and alkyl groups with 6 to 10 carbon
atoms. Appellants have not established on this record that the single
hydrolysate chosen for the Specification examples is truly representative of
the large number of compounds encompassed by the appealed claims.
The four declarations submitted by Appellants are similarly deficient
in demonstrating unexpected results. As correctly pointed out by the
Examiner, the sole declaration relevant to Fujioka, the primary reference, is
the one filed on October 7, 2002 (Appendix 3). The other three declarations
provide meaningless comparisons with Suzuki, which is cited by the
Examiner only for the obviousness of using colloidal silica and aluminum
chelates in the hardenable composition of Fujioka. Like the Specification
examples, the Declaration of Appendix 3 does not offer a true side-by-side
comparison to Example 2 of Fujioka since "different amounts of
γ-glycidoxypropyltrimethoxysilane, and 0.1N hydrochloric acid are used in
Example 1 vs. the comparative examples" (Answer 11, last sentence). Also,
since the Declaration is limited to the use of DMDES, for the reasons set
forth above, it is not commensurate in scope with the claimed subject matter
on appeal. In addition, the Examiner lodges other valid criticisms of the
probative value of the Declaration at page 12 of the Answer, first paragraph,
pertaining to the differences in the composition of Example 1 representing
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