Appeal No. 1997-0870
Application No. 08/333,416
must be made of inexpensive materials such as cardboard (see
Grodberg, col. 1, ll. 10-11; ll. 42-44; and col. 2, ll. 13-
19). The examiner has failed to identify any suggestion in
the prior art as a whole to substitute the expensive, reusable
polypropylene of Hielema for the inexpensive, disposable
cardboard of Grodberg.
Furthermore, the examiner has failed to identify any
convincing evidence or reasoning why one of ordinary skill in
the art would have substituted the system of core material and
adhesive in Hielema for the corresponding system in Grodberg.
The examiner's only reasoning is "because of the similarity in
operation of the Grodberg et al and Hielema winding devices."
(Answer, page 4). Although the methods of operation of the
winding devices in Grodberg and Hielema are similar, the
examiner has not identified any reason or suggestion as to why
one of ordinary skill in the art would have substituted means
and a method for applying corrosion and mechanical protective
coatings to a pipe as taught by Hielema in the paint roller
system and method of Grodberg. See Hielema, col. 1, ll. 30-
36. There must be a suggestion of desirability in the prior
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