Ex parte RAJALA et al. - Page 13




                 Appeal No. 97-3065                                                                                      Page 13                        
                 Application No. 08/452,747                                                                                                             


                 coating applied to the first and second rotary transport                                                                               
                 devices using a high temperature application process).6                                                                                


                 35 U.S.C. § 103                                                                                                                        
                          Claims 68, 70, 71, 73 to 76, 79, 83 and 96 to 98  are                                 7                                       
                 rejected under 35 U.S.C. § 103 as being unpatentable over Ales                                                                         
                 in view of Plasma.                                                                                                                     


                          The test for obviousness is what the combined teachings                                                                       
                 of the references would have suggested to one of ordinary                                                                              
                 skill in the art.  See In re Young, 927 F.2d 588, 591, 18                                                                              
                 USPQ2d 1089, 1091 (Fed. Cir. 1991) and In re Keller, 642 F.2d                                                                          
                 413, 425, 208 USPQ 871, 881 (CCPA 1981).  Moreover, in                                                                                 
                 evaluating such references it is proper to take into account                                                                           
                 not only the specific teachings of the references but also the                                                                         
                 inferences which one skilled in the art would reasonably be                                                                            


                          6This rejection would be overcome by amending "substrate                                                                      
                 is" in claim 98 to be --outer working surfaces are--.                                                                                  
                          7Claim 98 has been included in this rejection based upon                                                                      
                 our belief that the appellants will amend claim 98 as proposed                                                                         
                 above to overcome the 35 U.S.C. § 112, first paragraph,                                                                                
                 rejection.                                                                                                                             







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