Ex Parte YAMANA et al - Page 7



          Appeal No. 2000-0482                                                        
          Application 08/569,256                                                      


          unpersuasive since Horiuchi’s experiments do demonstrate that the           
          lifetime of the release agent is increased by the addition of               
          PTFE, thus providing motivation to include PTFE in the                      
          compositions of Horiuchi to extend the life thereof.  See                   
          Examiner’s Answer, pages 3-4, referencing Tables 10 and 11,                 
          experiments 6 and 4.  See In re Kronig, 539 F.2d 1300, 1304, 190            
          USPQ 425, 427-28 (CCPA 1976) (obviousness does not require that             
          references be combined for  the reasons contemplated by the                 
          inventor, rather, all that is required is that the prior art as a           
          whole provides some motivation or suggestion to combine the                 
          references).                                                                
                    Appellants further argue that:                                    
                    [t]here is no teaching in Wagner ‘586 to                          
                    suggest the preferential use of only PTFE                         
                    without a filler.  As a result, there is no                       
                    motivation for one skilled in the art to                          
                    combine the teachings of Wagner ‘586 with                         
                    those of the primary references, since there                      
                    is no suggestion in Wagner ‘586 of using PTFE                     
                    without the mineral filler.                                       
          Appeal Brief, page 13.  In addition, Appellants suggest that one            
          of ordinary skill in the art would not have been motivated to               
          combine the teachings of Horiuchi and Wagner since Horiuchi only            
          teaches the use of PTFE to impart hardness to the film and not to           
          act as a mold release agent.  Appeal Brief, pages 9-10.  Neither            
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