Ex parte SEKAR - Page 6




          Appeal No. 1997-0870                                                        
          Application No. 08/333,416                                                  


          art as a whole to make the proposed combination.  See Rouffet,              
          supra.  Any showing of a suggestion, teaching or motivation to              
          combine must be clear and particular.  In re Dembiczak, 175                 
          F.3d 994, 999, 50 USPQ2d 1614, 1617 (Fed. Cir. 1999).                       
                                  The examiner also states that "Garcia              
          shows that it is known to use polypropylene core stock for                  
          producing paint rollers" (Answer, page 4).  However,                        
          considering the teachings of Garcia as a whole, this reference              
          teaches the disadvantages of using "a tubular plastic or                    
          cardboard core" with an adhesive (col. 1, ll. 21-41).  Garcia               
          teaches heat bonding the fabric strip to the tubular plastic                
          core without the use of adhesives to form a single unitary                  
          body (col. 1, ll. 44-59).  Accordingly, Garcia teaches away                 
          from the use of an adhesive with a plastic tubular core.  A                 
          reference which teaches away is a significant factor to be                  
          considered in determining unobviousness.  In re Gurley,                     
          27 F.3d 551, 553, 31 USPQ2d 1130, 1132 (Fed. Cir. 1994).                    
               For the foregoing reasons, we determine that the examiner              
          has failed to establish a prima facie case of obviousness in                
          view of the reference evidence of Grodberg, Hielema and                     


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