Ex Parte TOYCEN et al - Page 5




          Appeal No. 2004-0119                                                        
          Application 08/644,170                                                      


          this teaching the examiner concludes that it would have been                
          obvious to one of ordinary skill in the art at the time                     
          appellants’ invention was made to have further modified Mino by             
          forming the tool of aluminum as taught by Zelenka in order to               
          reduce the weight of the tool and to reduce the cost of                     
          manufacture.  In this regard, the examiner further urges that               
               [i]t would have been obvious to one of ordinary                        
               skill in the art to have formed the tool of Mino et al. out            
               of any preferred material, since it has been held to be                
               within the general skill of a worker in the art to select a            
               known material on the basis of its suitability for the                 
               intended use as a matter of obvious design choice                      
          (answer, page 4).                                                           

          To account for the third difference noted above, the                        
          examiner has pointed to Ogden, urging that this patent teaches              
          that it is known in the art to provide thick, anodic coatings on            
          aluminum parts in order to protect against abrasion and corrosion           
          and to provide a tough, electrically insulating coating.  From              
          this teaching, the examiner concludes (answer, pages 4-5) that it           
          would have been obvious to one of ordinary skill in the art at              
          the time the invention was made to have provided an anodic                  
          coating on the modified tool of Mino as taught by Ogden in order            
          to protect against abrasion and corrosion and to provide a tough,           
          electrically insulating coating.  With regard to the thickness of           

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