Appeal No. 2004-2278 Page 6
Application No. 09/302,471
alcohol during drying does not result in replacement of the first solvent with a second solvent.
The solvent is removed during volatilization, but it is not “replaced” with anything.2
We find that the Examiner has not established anticipation with respect to the subject
matter of claims 7 and 10-12.
Turning to claim 13, this claim is directed to a method of forming a coating film on the
surface of a substrate. The Examiner finds that Takei teaches coating in paragraph [0002] of the
translation as this paragraph describes overlying batches of sol. This paragraph, however,
discusses a prior art process. There is no description of overlying batches of sol in the
discussion of Takei’s inventive process and it is this process which the Examiner relies upon for
the other limitations of the claim. While such picking and choosing might be appropriate to
establish the obviousness of claimed subject matter to one skilled in the art, anticipation cannot
be based on the combination of disclosures which are not directly related to each other by the
teachings of the cited reference. In re Arkley, 455 F.2d 586, 587, 172 USPQ 524, 526 (CCPA
1972).
Alternatively, the Examiner finds that the step of pouring the sol into a mold as described
in Example 1 of Takei is indistinguishable from a simple coating step. But claim 13 requires the
formation of a silica-based coating film on the surface of a substrate. The Examiner provides no
2See the accompanying dictionary definition for “replace.” The use of “replace” in the specification is
consistent with the second and third dictionary definitions, i.e., “to take the place of especially as a substitute or
successor” and “to put something new in the place of <replace a worn carpet>.” See also the statement that
“REPLACE implies a filling of a place once occupied by something lost, destroyed, or no longer usable or adequate
<replaced the broken window>.” Merriam-Webster’s Collegiate Dictionary, Electronic ed., version 2.5 (2000).
Page: Previous 1 2 3 4 5 6 7 8 9 Next
Last modified: November 3, 2007