Appeal No. 1999-2205
Application No. 08/738,469
coating with the expectation of achieving similar
success. The only difference between the instant
claims and the combination of reference is the
amount of undesired coating being removed. The
Examiner has taken the position that the combination
of references would be suggestive to one skilled in
the art that the entire coating may be removed with
the expectation of success. The amount of coating
removed is an arbitrary decision by a practitioner
in the art, a matter of design choice, and is not
deemed as a patentable distinction by the Examiner.
OPINION
The above noted rejection cannot be sustained.
The examiner’s conclusion of obviousness is not well
founded in a number of respects.
First, as correctly indicated by the appellants, the
applied references contain no teaching or suggestion for
replacing the smoother 8 (e.g., see Figure 1) used in the
Japanese reference process to regulate the coating thickness
with the roll 6/doctor blade combination used in the Figure 1
prior art process disclosed by Tanaka (i.e., to adjust coating
thickness on roll 5 which then transfers the coating onto web
4). Because the roll/doctor blade combination of Tanaka is
used in association with a roll rather than a web, there is no
basis for reasonably expecting that this combination would be
even capable of a successful use in association with the
5
Page: Previous 1 2 3 4 5 6 7 8 9 Next
Last modified: November 3, 2007