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
supplied.]
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-
43.]
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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