Appeal No. 1997-0424
Application 07/985,253
whole; there is no legally recognizable ‘heart’ of the
invention.” Para-Ordnance Mfg. v. SGS Importer Int’l, Inc.,
73 F.3d 1085, 1087, 37 USPQ2d 1237, 1239 (Fed. Cir. 1995),
cert. denied, 117 S.Ct. 80 (1996) citing W. L. Gore & Assocs.,
Inc. v. Garlock, Inc., 721 F.2d 1540, 1548, 220 USPQ 303, 309
(Fed. Cir. 1983), cert. denied, 469 U.S. 851 (1984).
All the independent claims, 1, 8 and 13, and hence the
dependent claims, 2 to 5, 17 and 9 to 12, contain the
limitation that the delivery member comprises a substrate
material, a first coating film comprising a resin containing a
filler and formed by electrodeposition on the substrate
material, and a second coating film composed of an organic
coating film formed on the first coating film. The Examiner
combines Takahashi with Masubuchi within the meaning of 35
U.S.C. § 103. Thus, the Examiner asserts that “It would have
been obvious ... to apply the coating of Masubuchi et al. to
the delivery member of Takahashi to protect the member from
unwanted chipping and corrosion from constant contact, as
Masubuchi et al. discussed.” [Answer, page 4].
While the Examiner is correct in finding that Masubuchi
teaches the application of two coatings on a substrate to
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