Ex Parte MURPHY - Page 10




          Appeal No. 2003-0413                                                        
          Application 09/148,262                                                      


          the examiner and the appellant should address on the record                 
          whether, because the coating resists wetting by most liquids and            
          few materials will permanently adhere to the nonstick surface, it           
          would have been obvious to one of ordinary skill in the art to              
          use a reduced amount of release agent in the article being                  
          molded.4                                                                    
               Also, the appellant discloses that it was known in the art             
          to reduce the problem of sticking of resin to a mold surface not            
          only by including a release agent in the plastic, but also by               
          spraying a release agent onto the mold surface (specification,              
          page 1, lines 17-22).  The examiner and the appellant should                
          address on the record whether an article made using such a mold             
          surface having a coating of release agent meets the requirements            
          of the appellant’s independent claims, i.e., 1) an eliminated or            
          reduced need for a release agent in the plastic (claim 1) or a              
          reduced level of release agent in the plastic (claims 26 and 27),           
          and 2) an enhanced surface.                                                 
               In addition, the appellant’s claim 1 merely requires                   
          elimination or reduction of the need to include a release agent             

               4 The appellant’s specification does not indicate that                 
          “reduce” requires any particular degree of reduction.  Thus, the            
          appellant’s claims encompass an infinitesimal reduction in the              
          conventional amount of release agent.                                       
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