Ex Parte Hernandez - Page 5

               Appeal 2007-1381                                                                          
               Application 10/686,069                                                                    
               forming tube and to add a sizing compound that provides the claimed                       
               impermeability to the liquid coating composition but remains pervious to                  
               vapors.  This is because McClellan specifically requires the addition of a                
               release agent, silicone being the only such agent disclosed (FF 3), and there             
               is no suggestion in the art that a sizing agent such as that disclosed in Pauley          
               would provide the required release property.                                              
                     The Examiner relies upon the disclosure in Pauley that the sizing                   
               agent imparts stain resistance to aqueous fluids as a basis for concluding the            
               sizing agent would serve as a release agent because staining is a type of                 
               bonding (Answer 6).  The Examiner states that:                                            
                           As stated by applicant at page 2, lines 1-5 of the instant                    
                     specification, it is conventional in the art of paper tubes used in                 
                     glass fiber production, to coat the paper tubes with silicone to                    
                     render them impervious to the liquid of the aqueous binder that                     
                     coats the glass fiber during production. The conventional                           
                     silicone coatings thus serve the purpose of preventing                              
                     penetration of the aqueous coating into the paper to preserve                       
                     strength as admitted by appellant and also the purpose of                           
                     preventing bonding of the aqueous coating with the paper tube                       
                     to allow release and removal of the coated glass fiber from the                     
                     paper tube as taught by McClellan.                                                  
                           The position of the examiner is that the size of Pauley et                    
                     al. would serve similar dual purposes since it excludes wetting                     
                     of the paperboard as well as resists staining, which is a type of                   
                     bonding. A prevention of the formation of any bond between                          
                     the size and paper of the tube would aide in release and removal                    
                     of the dried glass fiber. Thus use of the size of Pauley et al. as                  
                     an agent to resist water but still allow vapor permeability,                        
                     instead of a silicone coating that blocks both, would not destroy                   
                     the function of release of the glass fiber from the paper tube of                   
                     McClelland [sic, McClellan].                                                        



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