Ex parte BEIERLORZER et al. - Page 5




          Appeal No. 95-4375                                                          
          Application 08/153,491                                                      


          Pollux Trust” (final rejection, page 2).  While acknowledging               
          that Pollux Trust does not disclose that a moistening step would            
          be beneficial in a method like that of the Parker references, the           
          examiner contends that                                                      
               this point has no bearing on the application or the                    
               reasons why one of ordinary skill in the art would be                  
               motivated by the combination or Pollux and Parker to                   
               apply moisture to a sheet of paper.  Pollux does                       
               disclose that applying moisture to a paper sheet would                 
               be helpful in the deformation of a paper sheet.  Thus,                 
               the combination of Parker and Pollux would motivate one                
               of ordinary skill in the art to apply moisture to a                    
               sheet of paper “in order to make the subsequent                        
               embossing durable and by this means to obtain the                      
               conditions for a rapid working.” (page 3, lines 64-67                  
               of Pollux).  Furthermore, Pollux is considered                         
               analogous art in that it deals with the same type of                   
               problem that the appellant’s invention addresses, i.e.,                
               increasing the workability of the paper in a paper                     
               deforming device and increasing the durability of the                  
               folded/embossed area . . . . [answer, pages 4-5]                       
               While we appreciate the examiner’s position, we do not agree           
          that it would have been obvious, in view of Pollux Trust, to                
          modify either of the Parker references in the manner proposed.              
          In essence, we consider that the subject matter of Pollux Trust             
          is too far-removed from that of the Parker references to have               
          suggested modifying the latter in the manner proposed by the                
          examiner.  Although both the Parker references and Pollux Trust             
          broadly deal with deforming paper material, the Pollux Trust                
          apparatus utilizes positive forming devices (i.e., embossing mold           

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