Ex Parte Fawley - Page 17

                   Appeal 2006-1207                                                                                                  
                   Application 10/354,491                                                                                            

                   application of the reinforcement material.  Specifically, Wilhelm teaches                                         
                   cleaning at least the weld joint by sandblasting (Translation 11).  Dempster                                      
                   discloses “conventional ways known in the art [to clean pipe surfaces] such                                       
                   as by shot or grit blasting and preheat[ing], e.g. to 125o-200 oF” (col. 4, lines                                 
                   46-47).                                                                                                           
                           Based on these disclosures and the common purpose of corrosion                                            
                   prevention, we agree with the Examiner’s conclusion that one of ordinary                                          
                   skill in the art at the time of the invention would have found the disclosure                                     
                   of Dempster regarding the preheating step applicable to the process of                                            
                   Wilhelm as “a conventional manner [to treat steel pipes] prior to applying                                        
                   . . . composite tapes” (Answer 7).                                                                                
                           Accordingly, we sustain the alternative rejection  of claim 15 under                                      
                   35 U.S.C. § 103(a) over Wilhelm in view of Dempster.                                                              
                           Claim 16 recites “priming the first ends of the cut-back portions.”                                       
                   The Examiner relies on the combination of Wilhelm and Dempster to meet                                            
                   this limitation for the reasons expressed in the above quotation from the                                         
                   paragraph bridging pages 6 and 7 of the Answer.                                                                   
                           Appellant argues “the adhesion mechanism of Wilhelm is not                                                
                   facilitated by priming, thus one of ordinary skill in the art would not be                                        
                   motivated to add a useless or redundant step to the process of Wilhelm” (Br.                                      
                   13).                                                                                                              
                           According to the Examiner:                                                                                
                                   A fair reading of Dempster suggests that the                                                      
                                   disclosed treatment techniques are generally                                                      
                                   applicable to methods in which a reinforcement                                                    
                                   material is applied to a metallic pipe surface.  This                                             
                                   is further supported by the suggestion of one of the                                              
                                   treatment techniques by Wilhelm in a method                                                       

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