Ex parte SUZUKI et al. - Page 3


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

                     appellants’ arguments, adding the following only for emphasis.                                                                                                    
                                As discussed by the examiner, the dispositive issue in this appeal is whether one of ordinary                                                          
                     skill in this art would have found a reasonable suggestion in the combined teachings of Shibata and                                                               
                     Tanaka to modify the application method of Shibata by using different solvents in the precoat and the                                                             
                     magnetic recording coat solutions applied by a non-pressurizing coating head, as exemplified in this                                                              
                     reference, in view of the teachings that the same or different solvents can be used in such precoat and                                                           
                     magnetic recording coat solutions applied by a pressurizing coating head in the application method of                                                             
                     Tanaka, with the reasonable expectation of wet coating the magnetic recording coat solution over the                                                              
                     precoat on a support (answer, pages 4-5 and 7-9).  Appellants submit that one of ordinary skill in this                                                           
                     art would not have combined the teachings of Shibata and Tanaka in view of the difference in the type                                                             
                     of coating head used in the application methods disclosed therein because of the “degree of occurrence                                                            
                     of the runaway phenomenon” (brief, pages 5-6).  In support of their position, appellants allege that this                                                         
                     phenomenon “is not likely to occur” with a pressurizing coating head “because the coat layer is strongly                                                          
                     pushed against the precoat layer” and “more readily occurs” with a non-pressurizing coating head “since                                                           
                     the coating fluid has little pressure when applied” (id., page 6).  Thus, appellants contend that because                                                         
                     the phenomenon is “unique . . . only . . . [where] a non-pressure type coating head is used” and not                                                              
                     mentioned in Tanaka, one of ordinary skill in this art “would never recognize that the runaway                                                                    
                     phenomenon could be eliminated by following the teachings of [Tanaka]” (id., pages   6-7).  The                                                                   
                     examiner, noting the similarities in the application methods of Shibata and Tanaka, including the precoat                                                         
                     and magnetic recording coat solutions used therein, submits that one of ordinary skill in the art would                                                           
                     have been motivated to use the conventional coating materials of Tanaka in the method of Shibata with                                                             
                     the expectation of “similar coating results” even if this person did not recognize the problem of the                                                             
                     “runaway phenomenon” (answer, pages 7-9).                                                                                                                         
                                We must agree with the examiner that the coating materials taught in Shibata and Tanaka are                                                            
                     conventional and we find from reviewing these references that there is little, if any, difference in such                                                         
                     materials and that pressure is used to apply these materials regardless of the type of coating head                                                               
                     employed.  Indeed, one of ordinary skill in this art would have reasonably expected that the coat                                                                 

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