Ex parte BEER et al. - Page 5




              Appeal No. 96-0044                                                                                         
              Application 08/014,136                                                                                     


                     Even if we were to assume for purposes of argument that one of ordinary skill in the                
              art  would have found it obvious to add the known lubricants of the secondary references to                
              the coating composition of Kampf, contrary to the examiner’s allegation,                                   
              Kampf fails to disclose the amount of lubricant used.  Kampf also does not explain the                     
              purpose for the lubricant.    In general, the concentration and choice of lubricants are                   
              viewed as important because excessive lubricant can nullify the intended effects or                        
              properties.    Here,  Kampf  indicates that an object of his invention is to produce                       
              electroconductive coatings which do not have certain known disadvantages,  one                             
              disadvantage being that metal coatings vapor deposited on plastic films often exhibit poor                 
              coating adhesion.  Hence on this record, since Kampf’s coating composition aids in the                     
              adhesion of the metal layer to the plastic film base, we must presume that the amount used                 
              is different from the amount used by appellants to “allow release of the metal layer from the              
              plastic film”.  Moreover, on this record, the examiner has not presented any evidence to                   
              establish that the amount of lubricant is a result effective                                               












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