Ex Parte Otter - Page 9




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


              the polymer film is polyester.  It appears Appellant considers one of ordinary skill in the art to               
              have the knowledge to determine what types of coatings to utilize that also provide the desired                  
              results of the claimed process of increased wettability of the surface.  Similarly, Linford teaches a            
              wide variety of polymers for coating the silica particulates, some of which are hydrophilic                      
              (Linford, col. 4, ll. 60-67) and one skilled in the art would have had the requisite knowledge                   
              needed to determine what type of polymer to utilize for coating the silica particulates to ensure                
              adequate adhesion to the polymer film and provide the desired hydrophilic nature of the surface                  
              in order to increase the wettability of the film.  Appellant has not convinced us that one of                    
              ordinary skill in the art would not have had the required knowledge to select an appropriate                     
              polymer for coating the silica particulates.                                                                     
                      We conclude that the Examiner has established a prima facie case of obviousness with                     
              respect to the subject matter of claim 7 which has not been sufficiently rebutted by Appellant.                  
              Obviousness of Claims 21 and 25                                                                                  
                      The Examiner rejects claims 21 and 25 as obvious over Bentley in view of Kaneko and                      
              further in view of Hayakawa.  The claims stand or fall together (Brief, p. 3).  We select claim 21               
              to represent the issues on appeal in accordance with 37 CFR § 1.192(c)(7)(2003).                                 
                      Claim 21 further limits claim 1 to require that the plurality of polar particulates are one of           
              alumina, zirconia, wollastonite, talc, and titanium dioxide.                                                     
                      The Examiner finds that Bentley and Kaneko are silent towards applying polar                             
              particulates from one of the claimed list.  The Examiner cites Hayakawa for its teaching of                      
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