Ex parte ARUDI et al. - Page 6




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


          teaches many binders for the magnetic layer (column 4, l. 17                
          et seq.).  After this disclosure of possible binders,                       
          Shimozawa discloses that “[t]he magnetic layer may further                  
          contain a lubricant.”  (Col. 13, l. 51).  Among many other                  
          lubricants, this reference teaches that “radiation-curable                  
          lubricants may conveniently be used.”  (Col. 14, ll. 11-12).                
          From the classes of radiation-curable lubricants, Shimozawa                 
          teaches some “fluoride substituted lubricants” (col. 14, ll.                
          42-58) but does not include any fluoride substituted                        
          lubricants among the preferred examples or in any of the                    
          examples (see col. 14, ll. 59-63 and the Examples on cols. 16-              
          24).  The examiner has not presented any convincing evidence                
          or reasoning, nor pointed to any evidence in Shimozawa, that                
          even if one of ordinary skill in the art selected the fluoride              
          substituted lubricants of Shimozawa, the fluorine group would               
          graft onto the main polymer chain in the polymeric binder of                
          Chernega or Nakamura.  On this record, there is no evidence                 
          that adding the fluoride substituted lubricant of Shimozawa to              
          the binder of Chernega or Nakamura would have resulted in a                 
          pendant fluorine-containing group in the final binder.  See                 


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