Ex parte RAJALA et al. - Page 17




          Appeal No. 97-3065                                        Page 17           
          Application No. 08/452,747                                                  


          roller 152 of Ales with a coating as taught by Plasma to                    
          provide wear resistance, excellent release and excellent web                
          tracking properties.  We note that while Plasma does not                    
          specifically set forth that the coatings provide protuberances              
          (claim 68), the release agent (claims 70, 71, 73 and 96), or                
          that the coating is metallic (claim 98), it is our view based               
          upon the appellants' admissions made on pages 12-13 of the                  
          specification, that these limitations are inherently met by                 
          the coatings disclosed by Plasma.  With regard to the claimed               
          amount of shrinkage permitted (claims 75, 76 and 79, it is our              
          determination that such limitations are also inherently met by              
          the above-noted modification of Ales.                                       


                                     CONCLUSION                                       
               To summarize, the decision of the examiner to reject                   
          claims 68, 70, 71, 73 to 76, 79, 83 and 96 to 98 under 35                   
          U.S.C. § 103 is reversed and new rejections of claim 98 under               
          35 U.S.C. § 112, first paragraph, and claims 68, 70, 71, 73 to              
          76, 79, 83 and 96 to 98 under 35 U.S.C. § 103 have been added               
          pursuant to provisions of 37 CFR § 1.196(b).                                









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