Ex Parte Ronay - Page 9

                Appeal 2006-2351                                                                                 
                Application 10/645,493                                                                           
                35 U.S.C. § 103(a) REJECTION OVER MOLNAR I IN VIEW OF HORIE                                      
                DEPENDENT CLAIM 24                                                                               
                       Claim 24 depends on independent claim 17 and further states that “the                     
                amount of solid lubricant particles is about 0.5 to about 30% by weight”                         
                (claim 24).                                                                                      
                       For dependent claim 24, Appellant further argues that Molnar I and                        
                Horie are not combinable since Horie “relates to glass grinding sheets from                      
                powdery metal compositions and not from polymer compositions” (Br. 8).                           
                We cannot agree with Appellant’s argument.                                                       
                       Molnar I discloses a finishing element, which may be constructed of a                     
                porous compressible material, for finishing (i.e., grinding) a workpiece such                    
                as a glass television faceplate (Molnar I, col. 16, ll. 26-29, col. 22, ll. 51-52).              
                Molnar I further discloses that supplying an effective amount of lubricant                       
                reduces the coefficient of friction between the workpiece surface and the                        
                finishing element finishing surface such that unwanted surface damage is                         
                reduced (Molnar I, col. 23, ll. 52-55).  Molnar I discloses adding solid                         
                lubricant to the finishing element (Molnar I, col. 26, ll. 52-67; col. 30, ll. 1-                
                4).                                                                                              
                       Horie discloses a grinding sheet for grinding glass lenses (Horie, col.                   
                1, ll. 11-15). Horie further discloses adding solid lubricant in an amount of                    
                1-5% by weight to the grinding sheet to prevent scratches on the glass during                    
                grinding (Horie, col. 3, ll. 60-65; claim 8).                                                    
                       From the above disclosures, Molnar I and Horie are combinable                             
                because one of ordinary skill in the art would have looked to Horie’s                            
                disclosure to determine a desirable amount of lubricant to add to Molnar I’s                     



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