Appeal No. 2006-0340
Application No. 10/089,315
in view of Hasui. Claims 1, 2, 4, 6, 10, 13-18, 24 and 26 stand
rejected under 35 U.S.C. § 103(a) as being unpatentable over
Goldheim in view of Hatfield.
We have thoroughly reviewed the respective positions
advanced by appellant and the examiner. In so doing, we concur
with appellant that the examiner's § 112, first paragraph
rejection is not well-founded. However, we are in complete
agreement with the examiner that the claimed subject matter would
have been obvious to one of ordinary skill in the art within the
meaning of § 103 in view of the applied prior art. Accordingly,
although we will not sustain the examiner's § 112 rejection, we
will sustain the examiner's § 103 rejections for the reasons set
forth in the Answer, which we incorporate herein.
We consider first the examiner's § 112, first paragraph
rejection. It is the examiner's position that the claim language
defining the twin wire thermal spring process as one where the
second wire is zinc or a zinc alloy does not find descriptive
support in the original specification, i.e., it is new matter.
The examiner explains that the only support in the specification
for the electric arc, twin wire spraying is found at page 7,
lines 25-31, which states that "the second wire can be zinc or
copper, aluminum, tin, nickel or magnesium." Therefore, the
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