Ex parte SUZUKI et al. - Page 2


                     Appeal No. 1997-0488                                                                                                                                              
                     Application 08/306,584                                                                                                                                            

                     has a slot surface along said slot meeting a top surface opposite said support forming a front edge tip                                                           
                     and back edge tip respectively, wherein the back edge tip forms an acute-angle tip, and the back edge                                                             
                     tip recedes in a direction opposite to the support from the front edge tip, and wherein a difference                                                              
                     between solubility parameter values at application temperature of said different solvents contained in                                                            
                     said precoat and said coat is less than or equal to 1.5.                                                                                                          
                                The appealed claims as represented by claim 2  are drawn to a method of sequentially forming1                                                                                    
                     a precoat and at least one coat in a wet condition on a support, which precoat and coat contain                                                                   
                     different solvents, with a non-pressurizing head as specified in this claim, wherein the difference                                                               
                     between the solubility parameter values at application temperature of said different solvents in the                                                              
                     respective precoat and coat is less than or equal to 1.5.  Appellants provide two different expressions                                                           
                     of the solubility parameter of a solvent at application temperature (specification, pages 8-9).  Appellants                                                       
                     disclose that the “solubility parameters are an index indicating solubility of solvents” which , when “close                                                      
                     to each other in value, mutual solubility is raised,” but if different, the lack of affinity may cause the “so-                                                   
                     called ‘runaway phenomenon’” (id., pages 5-6; see also, e.g., pages 10-11).                                                                                       
                                The references relied on by the examiner are:                                                                                                          
                     Shibata et al. (Shibata)                              4,907,530                                             Mar. 13, 1990                                         
                     Tanaka et al. (Tanaka)                                           4,968,528                                            Nov.   6, 1990                              
                                The examiner has rejected appealed claims 2 through 5 and 7 under 35 U.S.C.  103 as being                                                             
                     unpatentable over Shibata in view of Tanaka.  We affirm.                                                                                                          
                                Rather than reiterate the respective positions advanced by the examiner and appellants, we                                                             
                     refer to the examiner’s answer and to appellants’ brief for a complete exposition thereof.                                                                        
                                                                                     Opinion                                                                                           
                                We have carefully reviewed the record on this appeal and based thereon find ourselves in                                                               
                     agreement with the examiner that the claimed application method encompassed by appealed claim 2                                                                   
                     would have been obvious over the combined teachings of Shibata and Tanaka to one of ordinary skill in                                                             
                     this art at the time the claimed invention was made.  We agree with the position                                                                                  
                     advanced by the examiner for essentially the reasons stated in her answer, including her response to                                                              

                     1Appellants state in their brief (page 4) that the appealed claims “stand or fall together.” Thus, we                                                             
                     decide this appeal based on appealed claim 1. 37 CFR  1.192(c)(7) (1995).                                                                                        
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