Ex parte VACCA et al. - Page 5




          Appeal No. 94-4172                                                          
          Application 08/001,854                                                      


          to achieve patentees’ objective would correspond to the amount              
          necessary to achieve the appellants’ different objective.                   
          Further, we find nothing and the examiner points to nothing in              
          the applied references which evinces that the amount of colloidal           
          silica needed as a matting agent in order to prevent sticking as            
          desired by Inoue would correspond to any of the coverage values             
          embraced by the appellants’ claimed range.  For all we know, an             
          artisan with ordinary skill would have considered coverage values           
          of the type here claimed to be far in excess of the colloidal               
          silica amount needed to achieve patentee’s sticking-prevention              
          objective.                                                                  
               In short, to reach the minimum coverage value claimed by the           
          appellants, it would be necessary to increase the colloidal                 
          silica amount used in the protective layer of Inoue’s Example 1             
          by almost 70%.  This is far in excess of the amount exemplified             
          by patentee, and no evidence has been proffered by the examiner             
          to show that such an increase would have been the consequence of            
          optimizing Inoue’s colloidal silica parameter in order to achieve           
          his sticking-prevention objective.  See In re Sebek, 465 F.2d               
          904, 907, 175 USPQ 93, 95 (CCPA 1972).  It follows that we cannot           
          sustain the examiner’s  103 rejection of claims 1 through 3 and            
          5 through 9 as being unpatentable over Inoue in view of Muenter             

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