Ex parte SCOTT et al. - Page 7

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

          Sulcs does disclose an alumina tube having a zirconium oxide                 
          coating formed around the end caps of the arc tube.  The examiner            
          takes the position that the ZrO2 coating in Sulcs is continuous              
          because the coating does not have an abrupt break [answer, pages             
          3-4].  Appellants argue that since the coating in Sulcs appears              

          only at the end cap regions of the arc tube, there is a break in             
          the area between the coatings which are located at the respective            
          ends of the arc tube.  Appellants also argue that the coating in             
          Sulcs is not used for the same purpose as the coating in the                 
          invention.  The examiner responds that the claims do not require             
          that the continuous coating extend over the entire surface of the            
          Appellants= argument regarding the purpose of the coating                    
          is not persuasive.  Anticipation by a prior art reference does               
          not require either the inventive concept of the claimed subject              
          matter or the recognition of inherent properties that may be                 
          possessed by the prior art reference.  Verdegaal Brothers Inc. v.            
          Union Oil Co. of California, 814 F.2d 628, 633, 2 USPQ2d 1051,               
          1054 (Fed. Cir.), cert. denied, 484 U.S. 827 (1987).  It is                  
          enough that the article as recited in the claim exists in the                


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