Ex Parte D'ADDARIO et al - Page 11




          Appeal No. 2001-1527                                                         
          Application No. 08/753,265                                                   


          does not support the combination of the teachings of Donohoe with            
          those of Bullock or Medweg, which relate to molds having center              
          and peripheral sections.  Furthermore, while we agree with the               
          examiner that Bullock and Medweg teach cooling the center                    
          sections of molds, we do not find a reason, suggestion, or                   
          teaching in Donohoe that would invite one of ordinary skill in               
          the art to apply their teachings to the disclosure of forming the            
          annular section of the drum head membrane.  While this may be a              
          consequence of the incidental nature of Donohoe’s teachings                  
          regarding the molding of drum head membranes (Donohoe is                     
          primarily concerned with teaching how to integrally bond a                   
          preformed drum head membrane to a tensioning ring), we may not               
          substitute speculation for fact-finding.  The rejection of claims            
          1–5 is reversed.                                                             
               With regard to the examiner’s rejection of claims 17–19, the            
          examiner has relied on the theory that the selection of                      
          temperatures and pressures would have been matters of choice that            
          would have “obviously been determined . . . through routine                  
          optimization.”  (Answer at 11.)  The examiner asserts that the               
          temperature and pressure ranges recited in the claims are known              
          in molding processes involving polyester sheets, and that the                
          application of parameters within known ranges to the molding                 

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