Ex Parte SCHAEFFER et al - Page 4




             Appeal No. 1998-2409                                                                                 
             Application 08/398,259                                                                               


             (col. 2, lines 29-50).  McGill states that “the aim of the                                           
             present invention is to improve the adherence, durability and                                        
             corrosion resistance of a thermal barrier system without                                             
             affecting the prime purpose of said system, namely to reduce                                         
             substrate metal surface temperature thus allowing current high                                       
             temperature materials to operate effectively in hotter combustion                                    
             gas streams” (col. 3, line 57 - col. 4, line 2).                                                     
                    The examiner argues that it would have been obvious to one                                    
             of ordinary skill in the art to optimize Osozawa’s sulfur content                                    
             within Osozawa’s range of at most 10 ppm, thereby arriving at                                        
             appellants’ free sulfur content of less than about 1 ppm (answer,                                    
             pages 4-5).  Appellants, however, have selected their free sulfur                                    
             content for the purpose of reducing the tendency of the                                              
             protective system to debond (specification, page 6, lines 7-11).                                     
             Osozawa, on the other hand, selected his sulfur content, which                                       
             has not been established by the examiner as being free sulfur                                        
             rather than combined or total sulfur, to improve hot workability                                     
             (col. 2, lines 46-49).  The examiner has not explained why                                           
             Osozawa and McGill would have led one of ordinary skill in the                                       
             art to optimize Osozawa’s sulfur content for appellants’ purpose,                                    
             or why it reasonably appears that optimizing Osozawa’s sulfur                                        
             content for the different purpose disclosed by Osozawa would                                         

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