Ex parte MONAHAN - Page 4




          Appeal No. 96-0640                                                          
          Application 08/127,178                                                      
          1984).  Here, the examiner has not satisfied his initial                    
          burden.                                                                     
               The examiner argues (Ans., pp. 8):                                     
               It would have been obvious . . . to use approximately                  
               3 parts of lead powder or other dense filler of Metzger                
               to one part of polymer by mass because such large                      
          quantity                                                                    
               of lead is expected to give a film having a large mass                 
          due                                                                         
               to the large density of lead which is expected to result               
               in greater resonant frequency reduction of an object                   
          coated                                                                      
               therewith according to applicant’s admission that                      
          resonant                                                                    
               frequency is inversely proportional to the objects [sic]               
               mass.  The use of large amounts of filler is also                      
          expected                                                                    
               by the ordinary skilled artisan to increase the                        
          properties                                                                  
               which the ordinary skilled artisan normally uses fillers               
               to achieve . . . .                                                     
          Even presuming that persons having ordinary skill in the art                
          would have been aware that mass is inversely proportional to                
          resonant frequency, we are not convinced that appellant’s                   
          claimed mass-loaded coatings and methods of reducing the                    
          resonant frequency of a rigid element by applying said                      
          coatings, are unpatentable primarily because the examiner                   
          finds that generally “[t]he use of large amounts of filler is               
          also expected by the ordinary skilled artisan to increase the               
          properties which the ordinary skilled artisan normally uses                 

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