Ex parte SCOTT et al. - Page 6

          Appeal No. 96-1931                                                           
          Application 07/995,635                                                       

          Sulcs notes that reflective coatings of Awhite metal oxides@ such            
          as zirconium oxide have been tried for this purpose but do not               
          adhere well to the lamp [column 1, lines 59-62].   A white metal             
          oxide is not transparent as argued by the examiner because it                
          must reflect all visible wavelengths in order to appear white.               
          Thus, contrary to what the examiner asserts, the white metal                 
          oxide form of ZrO2 used by Sulcs is reflective of all visible                
          wavelengths and is not transparent at all.                                   
          Inherency requires that a structure or function be                           
          inevitably present.  In re Oelrich, 666 F.2d 578, 581-82, 212                
          USPQ 323, 326 (CCPA 1981).  The examiner=s reliance on the                   
          transparency of ZrO2 as being an inherent property of the coating            
          in Sulcs appears to be not only a highly disputable fact but also            
          most likely an incorrect finding.  Since the examiner has not                
          demonstrated that Sulcs discloses a transparent coating of the               
          type recited in claim 1, we do not sustain the rejection of claim            
          1 as anticipated by Sulcs.                                                   
          With respect to claims 5, 8 and 14, the question of                          
          anticipation concerns whether Sulcs discloses one of an interior             
          surface or exterior surface of the alumina tube having a continu-            
          ous coating of the oxide recited in each of the claims.  Trans-              
          parency of the coating is no longer recited.  As we noted above,             


Page:  Previous  1  2  3  4  5  6  7  8  9  10  11  12  13  14  15  Next 

Last modified: November 3, 2007