Ex parte SEKAR - Page 4




          Appeal No. 1997-0870                                                        
          Application No. 08/333,416                                                  


          production of paint rollers (Answer, page 4).                               
               From the foregoing findings, the examiner makes the                    
          following conclusions:                                                      


               [i]t would have been obvious to one having ordinary                    
               skill in the art to substitute Hielema's                               
               polypropylene core-forming strip material and                          
               corresponding adhesive application means for                           
               Grodberg et al's cardboard core-forming strip                          
               material precoated with adhesive, because Garcia                       
               shows that it is known to use polypropylene core                       
               stock for producing paint rollers, and because of                      
               the similarity in operation of the Grodberg et al                      
               and       Hielema winding devices.  (Id.).                             
               “[W]hen determining the patentability of a claimed                     
          invention which combines two known elements, 'the question is               
          whether there is something in the prior art as a whole to                   
          suggest the desirability, and thus the obviousness, of making               
          the combination.' [Citations omitted].”  In re Rouffet, 149                 
          F.3d 1350, 1356, 47 USPQ2d 1453, 1456 (Fed. Cir. 1998).  The                
          examiner has concluded that it would have been obvious to                   
          substitute the polypropylene core-forming strip material of                 
          Hielema for the cardboard core-forming strip material of                    
          Grodberg (Answer, page 4).  However, Grodberg specifically                  
          desires to make a disposable paint roller which necessarily                 

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