Ex Parte Otter - Page 8




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


                      Claim 7 further limits claim 1 to require coating an outer surface of the plurality of polar             
              particulates.                                                                                                    
                      The Examiner finds that Bentley and Kaneko are silent towards coating the outer surface                  
              of the polar silica particulates (Answer, p. 6).  The Examiner cites Linford for its teaching of                 
              applying a polymer coating to silica particulates as a coupling agent when embedding the                         
              particulates in a polymer or plastic to prevent de-bonding (Answer, p. 6).                                       
                      Appellant argues that there is no suggestion to employ an adhesive polymer coating in the                
              combination of Bentley and Kaneko in order to adhere the silica particulates to the polymer film                 
              because Kaneko teaches applying the silica particulates to the film as a solution (Brief, p. 5;                  
              Reply Brief, p. 2).  As discussed above in relation to claim 5, Applicant does not address the                   
              finding of the Examiner with regard to Kaneko that the silica particulates can be applied in any                 
              convenient manner including as a powder (Answer, p. 10).  Appellant again fails to convince us                   
              of reversible error on the part of the Examiner.                                                                 
                      Appellant further argues that the silica particulates taught in Kaneko form a hydrophilic                
              surface and that if the silica particulates are coated then the surface would no longer be                       
              hydrophilic and the effect of increased wettability would be lost (Answer, pp. 5-6).  It is noted                
              that the specification teaches using a surface treatment (coating) for the particulates either to                
              enhance adhesion of the particulates to the polymer film or to enhance wettability and that any                  
              coating can be utilized to enhance adhesion or wettability (page 6, lines 4-9).  Appellant provides              
              no guidance in choosing what type of coating to apply other than to use maleic anhydride when                    
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