Ex parte SCHONFELDER et al. - Page 6




          Appeal No. 1997-2070                                                        
          Application 08/487,921                                                      


          recording material differs primarily from the prior art                     
          tonable, radiation sensitive recording material described and               
          exemplified by Bauer '802 in the requirement of a                           
          polydiorganosiloxane component in the radiation sensitive                   
          layer, which component functions to control the “adhesion                   
          balance” of the tonable, radiation sensitive layer to the                   
          support and the coversheet.  In this regard, example 7 of                   
          Bauer '802 includes a polyester, i.e., polycaprolactone having              
          a molecular weight of 15,000 which functions to provide an                  
          adhesion balance between the radiation sensitive layer and                  
          support in this prior art material.  See Bauer ‘802 at column               
          13 and comparative example 1 in appellants' specification at                
          pages 11 and 12.                                                            
               The crux of the examiner's stated obviousness rejection                
          of the appealed claims is set forth in the examiner's answer                
          at page 6 as follows:                                                       
               [I]t would have been obvious to one of ordinary                        
               skill in this art at the time of the claimed                           
               invention to substitute the polydiorganosiloxane of                    
               Hodakowski into the radiation-sensitive layer of                       
               Bauer et al. [Bauer '802].  One of ordinary skill in                   
               this art would have been motivated to make this                        
               substitution because of the teaching of Hodakowski                     
               that the polydiorganosiloxane adhesion balance                         
               controlling compound provide [sic, provides]                           
                                         -6-                                          





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