Appeal No. 1998-1804
Application 08/668,291
See In re Fritch, 972 F.2d 1260, 1266, 23 USPQ2d 1780, 1783
(Fed. Cir. 1992).
Contrary to the examiner’s assertion, Johnstone does not
teach that it was conventional in the art to apply a silicone
coating onto a membrane. What Johnstone teaches is that in
the method disclosed therein for transferring metallic foil
from the foil’s backing to a toner, a release coating of a
material which can be a silicone is needed between the foil
and the backing if the backing is not inherently of release
material. The examiner has not explained why, in view of the
disclosure by Natarajan of non-sticky membrane materials and
the lack of any indication by Natarajan that sticking is a
problem when these materials are used, one of ordinary skill
in the art would have been led by the applied references
themselves to apply a coating of Johnstone’s release material
to Natarajan’s membrane. The record indicates that the
desirability of a non-stick coating on Natarajan’s membrane
comes from the appellants’ disclosure of their invention in
the specification rather than coming from the applied prior
art and that, therefore, the examiner used impermissible
hindsight in rejecting the appellants’ claims. See W.L. Gore
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