Ex parte ARUDI et al. - Page 5




          Appeal No. 1997-3544                                                        
          Application No. 08/404,234                                                  


          vinyl chloride comonomer of Chernega and replace it with                    
          styrene and acrylonitrile comonomers as taught by Nakamura to               
          promote solubility with urethane resins (id.).                              
               The examiner has realized that the proposed combination                
          of Chernega and Nakamura fails to disclose or suggest “the use              
          of comonomers having pendant fluorine containing groups,”                   
          i.e., the limitation of “pendant fluorine-containing groups”                
          recited in claim 1 on appeal (Answer, page 4).  The examiner                
          applies Shimozawa to “teach the use of fluro [sic, fluoro]                  
          graft copolymer in which fluorine containing methacrylates are              
          used to affix the fluorine group to a main chain of a                       
          copolymer, see column 14, lines 42-58.”  Id.  Therefore the                 
          examiner concludes that it would have been obvious to one of                
          ordinary skill in the art to use a fluoro methacrylate as a                 
          comonomer to incorporate a pendant fluoro group into the main               
          chain of Chernega in order to provide a lubricating surface                 
          for the magnetic layer (id.).                                               
               On this record, we determine that the examiner has                     
          provided no factual basis to support the conclusion of                      
          obviousness based on the Shimozawa reference.  Shimozawa                    


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