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 5Page: Previous 1 2 3 4 5 6 7 8 9 10 NextLast modified: November 3, 2007