Appeal No. 1999-2205
Application No. 08/738,469
Japanese reference web. Second, as also correctly argued
by the appellants, the applied references contain no teaching
or suggestion of entirely removing a second thickness coating
as required by the independent claim on appeal. Instead, the
smoother 8 of the Japanese reference, the coil bar 6 of Takeda
(e.g., see the prior art shown in Figures 1 and 2) and the
roll/doctor blade combination of Tanaka all function to
regulate the thickness of the coating rather than to remove
the coating. Concerning this claim feature, it is the
examiner’s previously quoted position that “[t]he amount of
coating removed is an arbitrary decision by a practitioner in
the art, a matter of design choice, and is not deemed a
patentable distinction by the Examiner.” We are constrained,
however, to regard this position as lacking discernible merit
since it is completely unsupported by the applied reference
evidence.
Further concerning this claim feature and the appellants’
corresponding arguments, the examiner contends that claim 13
“recites removing the ‘entire second coating thickness’ which
is simply the undesired portion of the coating not all the
coating” (answer, page 7; emphasis added). The appellants
6
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