Ex parte NELSON et al. - Page 6


                     Appeal No. 1996-2050                                                                                                                                              
                     Application 08/146,779                                                                                                                                            

                     roller in final form and laid on the surface of the paper sheet, with non-woven rolls, that have “voids”                                                          
                     which “aids in squeegeeing” the surface of the sheet material in order to apply a solution thereto to                                                             
                     obtain a non-uniform coating, as taught by Lux and acknowledged by appellants.  Certainly, the                                                                    
                     examiner has provided no evidence or scientific reasoning on this record why this interchange of rolls                                                            
                     would have been made by one of ordinary skill in this art in the apparatus of Thiele where the sheet                                                              
                     material coated is paper.                                                                                                                                         
                                Accordingly, it is manifest that the only direction to appellants’ claimed invention as a whole on                                                     
                     the record before us is supplied by appellants’ own specification. In re Fine, 837 F.2d 1071, 1074-                                                               
                     76, 5 USPQ2d 1596, 1598-1600 (Fed. Cir. 1988); In re Dow Chemical Co., 837 F.2d 469, 473, 5                                                                       
                     USPQ2d 1529, 1531-32 (Fed. Cir. 1988).                                                                                                                            
                                The examiner’s decision is reversed.                                                                                                                   
                                                                                    Reversed                                                                                           








                                                     CHUNG K. PAK                                                     )                                                                
                                                     Administrative Patent Judge                                      )                                                                
                                                                                                                      )                                                                
                                                                                                                      )                                                                
                                                                                                                      )                                                                
                                                     CHARLES F. WARREN                                                )   BOARD OF PATENT                                              
                                                     Administrative Patent Judge                                      )        APPEALS AND                                             
                                                                                                                      )      INTERFERENCES                                             
                                                                                                                      )                                                                
                                                                                                                      )                                                                
                                                     PAUL LIEBERMAN                                                   )                                                                
                                                     Administrative Patent Judge                                      )                                                                




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