Ex parte MAIER et al. - Page 5




          Appeal No. 96-2170                                                          
          Application 08/236,570                                                      


               through 18).                                                           
               However, from the dissertation provided on pages 4 and 5 of            
          the Answer, it is the examiner's position that one of ordinary              
          skill in the art would have found it obvious from the teachings             
          of the Japanese reference to modify the device of the admitted              
          prior art in the following manner:                                          
               (1) Apply a low energy surface covering to the land of the             
               downstream bar, in view of the fact that the Japanese                  
               reference discloses applying the covering to "selected                 
               areas" to prevent undesired buildup of coating material.               
               (2) Apply a low energy surface coating to the upstream bar             
               as well, because it would provide greater control of the               
               coating operation.                                                     
               (3) Terminate the coating short of the edges of both of the            
               bars, since the Japanese reference "clearly shows in Figure            
               2 versus Figure 4 the alternative of not extending the                 
               covering to the tip."                                                  
               The appellants argue in rebuttal that the references fail to           
          suggest providing a low surface energy coating on more than one             
          side of a die lip, that is, on both the upstream and the                    
          downstream bars of the die, or that the coating not extend                  
          completely to the edge of the bars (Brief, pages 5 and 6).                  
               Of course, the test for obviousness is what the combined               
          teachings of the prior art would have suggested to one of                   
          ordinary skill in the art.  See In re Keller, 642 F.2d 413, 425,            
          208 USPQ 871, 881 (CCPA 1981).  In establishing a prima facie               

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