Appeal No. 96-1214
Application No. 08/065,182
Claims 8 and 18
Claims 8 and 18 require that the grooves on the revolving coating bar have variable
depths and spacing arrangements. The examiner urges that claims 8 and 18 “do not
require that the spacing and depth is varied, they only require that a depth and spacing is
chosen so as to achieve a desired loading profile.” We disagree. These claims
specifically require that “grooves have a variable depth and/or spacing arrangement” (our
emphasis). The examiner has the initial burden under 35 U.S.C.
§ 103 to establish a prima facie case of obviousness. In re Piasecki, 745 F.2d 1468,
1472-73, 223 USPQ 785, 788 (Fed. Cir. 1984). On this record, the examiner has
provided no evidence within the prior art or our general knowledge that would have
suggested to one of ordinary skill in this art the subject matter of these claims. Carella v.
Starlight Archery Pro Line Co., 804 F.2d 135, 139, 231 USPQ 644, 647 (Fed. Cir. 1986);
Ashland Oil, Inc. v. Delta Resins & Refractories, Inc., 776 F.2d 281, 301-302, 227 USPQ
657, 675 (Fed. CIr. 1985), cert. denied 475 U.S. 1017 (1986); In re Rinehart, 531 F.2d
1048, 1051-52, 189 USPQ 143, 147 (CCPA 1976). Accordingly, the examiner’s rejection
of claims 8 and 18 is reversed.
In addition to affirming the examiner’s rejection of one or more claims, this decision
contains a new ground of rejection pursuant to 37 CFR § 1.196(b) (amended effective
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