Ex parte MAIER et al. - Page 7

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

          upstream bar in all of the embodiments.  However, important to              
          our conclusion, no such covering is shown also on the downstream            
          bar of the Figure 5 embodiment, which is the only one that has              
          both bars.  Nor is the use of this covering on the downstream bar           
          set forth in the text.  From our perspective, therefore, it would           
          appear that the only suggestion to provide a low surface energy             
          covering on the downstream bar as well as the upstream bar is               
          found via the hindsight accorded one who first viewed the                   
          appellants' disclosure.  This, of course, is not a proper basis.            

          See In re Fritch, 972 F.2d 1260, 23 USPQ2d 1780, 1784 (Fed. Cir.            
          1992).  We are not persuaded otherwise by the examiner's                    
          assertion that this reference discloses applying the covering to            
          "selected areas" (Answer, page 4, line 22), and that this would             
          have suggested both the downstream bar and the upstream bar, for            
          we find no support for such in the document.                                
               It is our further opinion that even assuming, arguendo, that           
          the combined teachings of the references would have suggested the           
          use of the covering on both bars, they fail to teach that the low           
          energy surface covering not extend completely to the edges of the           
          bars.  The examiner's position is that this is shown in Figure 2            


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