Ex parte KOCH - Page 5




          Appeal No. 1999-2492                                       Page 5           
          Application No. 08/801,676                                                  


          Rather FR 2,303,843 describes a rubber/metal bonding system                 
          that includes an adhesive layer that may correspond to                      
          appellant’s adhesive layer and a rubber primer, which rubber                
          primer the examiner has not clearly established as                          
          corresponding with appellant’s specifically claimed rubber                  
          primer layer.                                                               
               To make up for those deficiencies of FR 2,303,843, the                 
          examiner relies on White or Iwasa, and the alleged admitted                 
          prior art.  However, the examiner has not identified a                      
          particularized suggestion, reason or motivation to combine the              
          applied references or make the proposed modification of FR                  
          2,303,843 in a manner so as to arrive at the claimed invention              
          as is required for a sustainable rejection.  See In re                      
          Rouffet, 149 F.3d 1350, 1359, 47 USPQ2d 1453, 1459 (Fed. Cir.               
          1998).  Rather, the examiner merely offers conclusory remarks               
          and makes generalized statements regarding the applied                      
          references and the proposed combination thereof in the answer.              
          The other references applied by the examiner in rejecting                   
          claims 1-5 and 14 and 15 do not remedy the above-noted                      
          shortcomings.  Thus, even if we could agree that the examiner               
          has established the referred to portions of the specification               







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