Appeal 2007-2233
Application 10/228,754
uniform coating is desirable, one of ordinary skill in the art would have
modified Rosynsky’s method by applying a blast of pressurized air to
distribute the coating composition as suggested by Watanabe in the
expectation of removing excess coating composition and distributing the
remaining slurry in the substrate (id. 4-5).
The Examiner contends that when the combination of the references is
applied to Rosynsky’s method, the first end of the substrate is immersed in
the composition; the substrate is removed from the composition; the thus
coated substrate dried; the substrate is rotated 180°; the uncoated second end
of the substrate is immersed; the substrate removed from the slurry; and then
the pressurized air blast of Watanabe is applied (Answer 9).
Appellants contend that in considering the steps specified in claim 17,
“the term ‘then’ precedes the step of applying the blast of pressurized air,
which is recited immediately after the step of rotating the substrate 180°,”
requiring that after the coating has been applied to the substrate and the
substrate rotated 180°, the blast of air is then applied to the end of the
substrate immersed in the coating (Br. 7).
The issue in this appeal is whether the Examiner has carried the
burden of establishing a prima facie case of obviousness in applying the
combined teachings of Rosynsky and Watanabe to the claimed method
encompassed by claim 17. This is the basic combination of references
applied to all of the appealed claims and thus, a discussion of Hoyer is not
necessary to our decision.
We agree with Appellants that when claim 17 is interpreted in light of
the written description in the Specification, the claimed method encompasses
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