Ex parte SUZUKI et al. - Page 4

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

                     material must be wet coated with some pressure on the precoat even with the         so-called non-                                                                
                     pressurizing coating head and Shibata discloses in this respect that the “coating composition C is                                                                
                     applied to the support W by means of the high discharge pressure of the coating composition itself,”                                                              
                     which pressure is regulated at least in part by the tapering of the slot in the coating head (col. 6, lines                                                       
                     35-56; see also, e.g., col. 4, line 26, to col. 5, line 58).  Shibata teaches that                                                                                
                           prior to coating the composition C, the support W is coated with a precoat layer B soluble in                                                               
                           the coating composition C by a suitable coating method (not shown). The precoat layer B                                                                     
                           doubly functions to prevent the involvement of the air and to blend with the coating                                                                        
                           composition C when the coating composition C is applied. [Col. 4, lines 62-68; emphasis                                                                     
                     We find no disclosure in Shibata which would have reasonably suggested to one of ordinary skill in this                                                           
                     art that the requirement that the precoat layer B must be soluble in or blend with coating composition C                                                          
                     would limit the selection of solvents useful in these two layers to the same solvent as in the exemplified                                                        
                     solvent precoat and the magnetic recording coat solution in the sole Shibata example.  Indeed, there is                                                           
                     no other limitation on the precoat and coat compositions, including the solvents used therein, taught in                                                          
                     this reference for use with the coating head disclosed therein.  We find that Tanaka discloses the same                                                           
                     parameter for the solvents selected for the precoat and magnetic recording coat solution for a                                                                    
                     pressurizing coating head:                                                                                                                                        
                           In the preparation of the precoat layer . . . any solvent can be used as long as its has . . . good                                                         
                           compatibility with the solvent used in preparation of the magnetic coating solution.                                                                        
                           Solvents having the same composition as or a similar composition to that of the solvent for                                                                 
                           use in preparation of the coating solution are preferably used. [Col. 3, lines 58-65; emphasis                                                              
                           supplied; see also, e.g., col. 2, lines 13-28, col. 3, line 66, to col. 4, line 3, and col. 4, lines 40-                                                    
                                Accordingly, based on this evidence, we must agree with the examiner that the combined                                                                 
                     teachings of Shibata and Tanaka would have reasonably suggested to one of ordinary skill in this art to                                                           
                     use precoat and magnetic recording coat solutions containing different but compatible solvents as taught                                                          
                     by Tanaka with the coating head of Shibata in the reasonable expectation of obtaining “similar coating                                                            
                     results” because the same requirements for solvent compatibility is taught in each of these references.                                                           
                     In re Dow Chemical Co., 837 F.2d 469, 473, 5 USPQ2d 1529, 1531-32 (Fed. Cir. 1988) (“Both                                                                         
                     the suggestion and the reasonable expectation of success must be found in the prior art and not in                                                                
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