Ex Parte Coles et al - Page 4




          Appeal No. 2002-2286                                                        
          Application 09/706,252                                                      


          The examiner’s reasoning in rejecting claim 19 under                        
          35 U.S.C. § 103(a) on the basis of the collective teachings of              
          Goodloe and Severinsen is set forth on pages 3-4 of the answer.             
          Essentially, the examiner is of the view that it would have been            
          obvious to have the conductive seal of Goodloe “replaced by the             
          conductive seal of Severinsen, to provide a further conductive              
          seal and a seal that is able to bend and stressed on [sic].”                
          Recognizing that such combination of Goodloe and Severinsen would           
          still not address appellants’ method step of providing a layer of           
          fluorosilicone as required in claim 19, the examiner urges that             
          it would have been obvious to one of ordinary skill in the art at           
          the time the invention was made “to make the layer of silicone              
          polyurethane of Severinsen to be replaced by fluorosilicone,                
          since it has been held to be within the general skill of a worker           
          in the art to select a know [sic] material on the basis of its              
          suitability for the intended use as a matter of obvious design              
          choice,” citing In re Leshin, 277 F.2d 197, 199, 125 USPQ 416,              
          418 (CCPA 1960).                                                            


          Like appellants, we find nothing in either Goodloe or                       
          Severinsen which teaches or suggests a method of electrically               
          conductively bonding opposing mating surfaces as set forth in               
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