Appeal No. 1999-2414
Application No. 08/942,732
coating have no patentable significance in the apparatus claims before us. Appellants contend that it
would be “difficult if not impossible” to use any of the recited coating methods in the Weissman
structure because only the larger diameter sections (16, 29) would be coated. Appellants further
explain that, contrary to the examiner’s position, the selected method of providing a coating is very
relevant to the apparatus claims “to the extent that selection of one or more of the recited techniques
simply could not be operably employed in connection with the Weissman reference” [principal brief-
page 7].
We will sustain the rejection of claims 13, 15, 16, 25 and 26 under 35 U.S.C. 103 because we do
not find appellants’ arguments persuasive of patentability. The only argument presented by appellants
against the examiner’s position that the claimed coating techniques are not relevant is that selection of
one or more of the recited techniques simply could not be operably employed in connection with the
Weissman reference. Appellants’ reasoning for not operably employing the coating techniques in
Weissman is because it is appellants’ opinion that the coating would need to be placed only on the
larger, cutting sections of Weissman. However, claim 13 depends on claim 8 which recites that the
coating is placed “on at least a portion of an exposed surface of said working shaft portion...”. Thus,
these claims do not preclude a coating on other parts of the working shaft, such as sections 15 and 30
of Weissman. Therefore, to whatever extent appellants’ argument regarding the difficulty or
impossibility of applying coating just to the cutting sections of Weissman’s shaft has any credence, the
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