Ex parte ANDRE et al. - Page 8




          Appeal No. 1997-0530                                                        
          Application 08/312,493                                                      



          (page 16, lines 37-38) within that range, reasonably would                  
          have conveyed to one of ordinary skill in the art that                      
          appellants were in possession of an invention in which the                  
          amount of second polymer is at least 7.2% by weight up to the               
          upper limit of less than 30% by weight recited in claims 1 and              
          10 from which claims 21 and 22, respectively, depend.  See                  
          Wertheim, 541 F.2d at 265, 191 USPQ at 98.                                  
               For the above reasons, we reverse the rejection under                  
          35 U.S.C. § 112, first paragraph.                                           
                           Rejection under 35 U.S.C. § 103                            
                                  over Haubennestel                                   
               Haubennestel discloses a lacquer which can be used for                 
          coating coils and which includes a polyester-containing                     
          polysiloxane to impart anti-adhesive character and increased                
          lubricity to the lacquer (abstract; col. 5, line 68 - col. 6,               
          line 1; col. 24, line 27).  The amount of the polyester-                    
          containing polysiloxane is at least about 0.1 wt% and                       
          particularly preferably at least about 0.5 wt% of the lacquer               
          composition (col. 6, lines 19-23).  The lacquer includes a                  
          binder which can be a polyester (col. 4, lines 64-65; col. 11,              


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