Appeal No. 1996-2050
Application 08/146,779
ordinary skill in the art to do so. See, e.g., In re Laskowski, 871 F.2d 115, 117, 10 USPQ2d 1397,
1398 (Fed. Cir. 1989), and cases cited therein; cf. In re Siebentritt, 372 F.2d 566, 152 USPQ 618
(CCPA 1967) (express suggestion not necessary to interchange equivalent means). Such a suggestion
can come from knowledge generally available to one of ordinary skill in this art. See, e.g., Ashland
Oil, Inc., v. Delta Resins & Refractories, Inc., 776 F.2d 281, 297 n.24, 227 USPQ 657, 667 n.24
(Fed. Cir. 1985). The examiner alleges that one of ordinary skill in this art “knows that the Thiele
apparatus would coat any sheet material whether paper, plastic, metal, etc. via the use of rubber
applicator rolls” or other resilient material (answer, page 6; emphasis supplied; see supra p. 2). We
are of the view that the judicial notice the examiner has thus taken of specific knowledge in the art
should have been supported by evidence or scientific reasoning because it is not at all apparent on this
record that one of ordinary skill in this art would find that the apparatus of Thiele disclosed for the
coating of paper per se would be capable of coating, inter alia, metal sheet. See In re Ahlert, 424
F.2d 1088, 1091-92, 165 USPQ 418, 420-21 (CCPA 1970). Furthermore, the examiner’s finding
with respect to knowledge in the art was made for the first time in the answer and we find that
appellants were thus not amply apprised of such finding so as to have the opportunity to challenge the
same. Ahlert, 424 F.2d at 1092, 165 USPQ at 421; cf. In re Hoch, 428 F.2d 1341, 1342 n.3, 166
USPQ 406, 407 n.3 (CCPA 1970). Indeed, this finding by the examiner is different than his finding
based on the teachings of Thiele and Lux which appellants traversed by pointing out that Thiele “relates
to an apparatus for coating paper web” (brief, page 14). Similarly, we find no disclosure in Lux, which
involves metal sheet material, or in admissions in appellants’ specification, cited above, which also
involve metal sheet material, any support for the examiner’s statement that “it was known in the coating
art, at the time the invention was made, to use non-woven applicator rollers . . . to coat sheet material,”
which does not specify the nature of the “sheet material” (answer, page 6).
Furthermore, even if it were assumed that the paper coating apparatus of Thiele could be used
to coat metal sheet, the examiner has not established by evidence or scientific reasoning that one of
ordinary skill in this art would have interchanged the semi-resilient surfaced coating rollers of Thiele, on
which is formed a smoothed film of uniform thickness that is then picked up from the surface of the
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