Appeal No. 2000-1028
Application No. 08/950,522
ordinary skill in the art “would perform these two steps of the
process in a sequence consistent with the desired product of the
process at hand” (Answer, page 5) is a conclusory statement that
the examiner has not supported by any factual basis or convincing
reasoning. See In re Lee, 277 F.3d 1338, 1343-44, 61 USPQ2d
1430, 1434 (Fed. Cir. 2002)(“The examiner’s conclusory statements
... do not adequately address the issue of motivation to combine.
This factual question of motivation is material to patentability,
and could not be resolved on subjective belief and unknown
authority.”). The examiner has not explained why another product
would have been “desired.” Additionally, the examiner only
addresses the interchange of the overlapping and coating steps
(Answer, page 5) while Ritter teaches an overlapping step before
the first coating step, the drying step, and the second coating
step. Therefore, the examiner has failed to address or explain
the motivation for moving all of these steps taught by Ritter to
achieve the order or sequence of steps recited in the claims on
appeal.
For the foregoing reasons, we determine that the examiner
has failed to establish a prima facie case of obviousness in view
of Ritter. As discussed above, the secondary references to
Greiner, Calkin and Swanson do not remedy the deficiency noted
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