Ex parte KAMO - Page 3




         Appeal No. 93-1311                                                         
         Application 07/279,713                                                     


              We cannot sustain this rejection.                                     
              It is the examiner’s fundamental position that it would have          
         been obvious for one with ordinary skill in the art to replace             
         the hollow glass beads, which function as a burn-out material to           
         provide increased porosity, in Jones’ coating (e.g., see lines             
         49-51 in column 6 and lines 61-65 in column 16) with the hollow            
         inorganic spheres taught by Beck.  However, these references               
         contain no teaching or suggestion that Beck’s spheres should be            
         used in a coating environment of any kind much less the coating            
         of Jones or that Beck’s spheres would be even capable of “burn-            
         out” as required of Jones’ beads.  Stated otherwise, these                 
         references provide no suggestion for combining their teachings in          
         the manner proposed by the examiner and no suggestion that such a          
         combination would be successful.  In re O’Farrell, 853 F.2d 894,           
         13902, 7 USPQ2d 1673, 1680-81 (Fed. Cir. 1988).                            
              In this latter regard, it is appropriate to emphasize that a          
         burn-out material must be physically disposed within a coating in          
         order to increase coating porosity and that the sphere diameters           
         disclosed by Beck (e.g., see lines 14-27 in column 3) are                  
         generally larger than the thicknesses of Jones’ coating layers             
         (e.g., see the layer thicknesses in Tables IV and V).  Indeed,             
         the smallest sphere diameter disclosed by Beck is larger than              

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