Ex parte MAIER et al. - Page 6




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


          case of obviousness under 35 U.S.C.  103, it is incumbent upon             
          the examiner to provide a reason why one of ordinary skill in the           
          art would have been led to modify a prior art reference or to               
          combine reference teachings to arrive at the claimed invention.             
          See Ex parte Clapp, 227 USPQ 972, 973 (Bd. of Pat. App. & Int.              
          1985).  To this end, the requisite motivation must stem from some           
          teaching, suggestion or inference in the prior art as a whole or            
          from the knowledge generally available to one of ordinary skill             



          in the art and not from the appellant's disclosure.  See, for               
          example, Uniroyal, Inc. v. Rudkin-Wiley Corp., 837 F.2d 1044,               
          1052, 5 USPQ2d 1434, 1052 (Fed. Cir.), cert. denied, 488 U.S. 825           
          (1988).                                                                     
               It is our view that the combined teachings of the prior art            
          relied upon fail to suggest that a low surface energy covering be           
          applied to both the upstream bar and the downstream bar of a die            
          coating apparatus of the type claimed.  The Japanese reference              
          discloses several embodiments of die coating devices having only            
          an upstream bar (Figures 1 through 4), and one embodiment having            
          both an upstream bar and a downstream bar (Figure 5).  A low                
          surface energy covering is illustrated upon the surface of the              
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