Ex parte SCOTT et al. - Page 10

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

          The examiner asserts that providing another identical                        
          oxide coating on the interior surface of Sulcs= arc tube for an              
          identical purpose would involve only routine skill in the art,               
          and that duplication of elements to multiply known results is an             
          obvious thing to do [answer, page 5].  Appellants argue that                 
          there is no suggestion to duplicate the coating in Sulcs and                 
          there is no motivation to do so.  They also argue that such                  
          suggestion cannot simply be pulled from the category of Acommon              
          knowledge in the art@ [brief, page 6].                                       
          When the positions of the examiner and appellants are                        
          evaluated in view of the prior art evidence before us, we are of             

          the view that appellants= arguments are convincing that the                  
          examiner has failed to factually support his position of obvious-            
          ness.  The position that a second coating in Sulcs represents a              
          mere duplication of effort is without basis.  Since the purpose              
          of Sulcs is to have the coating reflect heat back onto the tube,             
          a second coating would make no sense at all.  If the coating                 
          works properly, then a second coating would be unnecessary since             
          the first coating would reflect the heat back before it could get            
          to the second coating.  If the coating does not work to reflect              
          heat back onto the tube, then a second coating of such a material            


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