Appeal No. 96-1320
Application 08/081,744
original contour (col. 5, lines 38-45). After a white acrylic
lacquer was applied over a sealer, the seam was nearly
invisible and did not show any sink marks or paint pops (col.
5, lines 45-54). Holmes states that "[i]nstead of sanding the
parts as described above, grinders, cutters and other devices
may be used to remove extraneous material and obtain the
desired contour, care being observed not to harm the surface
of the FRP part" (col. 6, line 66 - col. 7, line 2).
The examiner is of the view that an abraded surface as
recited in appellants’ claim 1, which is appellants’ only
independent claim, is formed during Holmes’ step of sanding
the adhesive. The examiner argues that "logically it is
unclear how an adhesive mass, as shown in Fig.1, could be
‘sanded to remove the remaining hill . . . to retain the
original contour’, with the result pictured in Fig.2, without
inherently causing some abrasion to the underlying molded
surface. Further, the admonition to take care not to harm the
surface of the FRP part supports the logic that the part is
very likely to be at least slightly abraded by the sanding"
(answer, pages 5-6).
When an examiner relies upon a theory of inherency, "the
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