Ex Parte YAMANA et al - Page 6



          Appeal No. 2000-0482                                                        
          Application 08/569,256                                                      


                    [p]olytetrafluoroethylene is known as a slip                      
                    agent and lubricant and as a substance with a                     
                    release effect in many fields of use.  So-                        
                    called polytetrafluoroethylene micro-powders                      
                    (also called “polytetrafluoroethylene waxes”)                     
                    are particularly preferred according to the                       
                    invention.  These low-molecular-weight poly-                      
                    tetrafluoroethylenes generally have a                             
                    molecular weight of 30,000-200,000 and an                         
                    average particle size of 1 to 20 :m.                              
                                                                                     
          Wagner, column 2, line 66-column 3, line 6.  The mineral fillers            
          utilized by Wagner include known slip and release agents such as            
          talc, kaolin and mica.  Id. at column 3, lines 33-35.  Wagner               
          further notes that the effectiveness of the PTFE can be increased           
          by using silicone oils.  Id. at column 3, lines 23-25.                      
                    It is the examiner’s position that one of ordinary                
          skill in the art would have been motivated to utilize the low               
          molecular weight PTFE of Wagner in the compositions of Horiuchi             
          to obtain further improvements in release properties of the                 
          Horiuchi composition.  Appellants argue that “Horiuchi ‘235 fails           
          to suggest or provide motivation” to utilize the low molecular              
          weight PTFE disclosed in Wagner in the Horiuchi composition since           
          Horiuchi’s test results demonstrate that improved releasability             
          is not attained when PTFE is included in the composition, i.e.,             
          there would be no reasonable expectation of enhanced                        
          releasability.  Appeal Brief, pages 9-10.  This argument is                 
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