Ex parte HIYOSHI et al. - Page 3




          Appeal No. 96-2726                                                          
          Application 08/005,401                                                      


          of a cylinder or dandy roll, and employing the patterned roll to            
          make the watermark paper.                                                   
               Appealed claims 1 and 6 stand rejected under 35 U.S.C. § 103           
          as being unpatentable over Denton in view of Izard.  Claim 4                
          stands rejected under 35 U.S.C. § 103 as being unpatentable over            
          Denton in view of Izard and Japanese ‘248.  Also, claims 5, 7 and           
          8 stand rejected under 35 U.S.C. § 103 as being unpatentable over           
          Denton in view of Izard and Edge and either Waters or Fearing.              
               We have carefully reviewed the respective positions advanced           
          by appellants and the examiner.  In so doing, we agree with                 
          appellants that the claimed subject matter would not have been              
          obvious to one of ordinary skill in the art in view of the                  
          teachings of the applied prior art.  Accordingly, for essentially           
          the reasons expressed by appellants in their brief, we will not             
          sustain the examiner’s rejections.                                          
               All the applied references relating to making watermark                
          paper, namely, Denton, Waters and Fearing, employ wire cloth on a           
          dandy roll or the like.  None of these references, either in the            
          inventive disclosure or the discussion of the prior art, teaches            
          or suggests using appellants’ synthetic or natural fiber lace to            
          produce watermark paper.  On the other hand, both Izard and Edge,           
          the references which disclose the use of fabric patterns to                 

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