Ex Parte Otter - Page 3




              Appeal No. 2004-1869                                                                                             
              Application No. 09/738,591                                                                                       


              2.      Claims 5 and 28 stand rejected under 35 U.S.C. § 103(a) as being unpatentable over                       
              Bentley in view of Kaneko and further in view of McCulloch (Answer, p. 5).                                       


              3.      Claim 7 stands rejected under 35 U.S.C. § 103(a) as being unpatentable over Bentley in                   
              view of Kaneko and further in view of Linford (Answer, pp. 5-6).                                                 


              4.      Claims 21 and 25 stand rejected under 35 U.S.C. § 103(a) as being unpatentable over                      
              Bentley in view of Kaneko and further in view of Hayakawa (Answer, pp. 6-7).                                     
                      We affirm the decision of the Examiner with respect to all four rejections.  In so doing,                
              we incorporate the reasoning of the Examiner provided in the Answer and add the following.                       


                                                          OPINION                                                              
              Obviousness of Claims 1-4, 20, 22, 23, 26, and 28                                                                
                      The Examiner rejects claims 1-4, 20, 22, 23, 26, and 28 as obvious over Bentley in view                  
              of Kaneko.  The claims stand or fall together (Brief, p. 3).  We select claim 1 to represent the                 
              issues on appeal in accordance with 37 CFR § 1.192(c)(7)(2003).                                                  
                      Claim 1 is directed to a method for making a film for use with a heat transfer component.                
              In the method, a plurality of polar particulates are applied and bonded to the surface of a film                 
              prior to adding the film to the heat transfer component.  There is no dispute that Bentley                       
              describes adding a film to a heat transfer component as claimed.  The Appellant finds that                       
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