Ex Parte MacLachlan - Page 7

                Appeal 2007-1385                                                                             
                Application 09/997,347                                                                       
                1734, 82 USPQ2d at 1391 (“While the sequence of these questions might be                     
                reordered in any particular case, the [Graham] factors continue to define the                
                inquiry that controls.”).                                                                    
                      Applying the preceding legal principles to the Factual Findings in the                 
                record of this appeal, we determine that the Examiner has established a                      
                prima facie case of obviousness that has not been rebutted by Appellant.                     
                      The prior art applied by the Examiner shows that applying a                            
                hydrophobic coating on the exterior surface of vehicle glazing was known in                  
                the art (FF 1) as was adhering the peripheral edges of these coated window                   
                panels to moldings (FF 2).  There was a known problem:  The hydrophobic                      
                water-repellant film has poor affinity to the adhesive (FF 3).  The art solved               
                this problem by masking the edge of the glass panel so that it would not be                  
                coated, but this masking presented further problems (FF 3-4).  Yoshinori                     
                describes a UV removal process that overcomes several problems with the                      
                masking technique and results in a window panel with the coating removed                     
                in select areas where it is not wanted.  The suggestion to use the UV removal                
                process of Yoshnori in the process of forming a window panel to be adhered                   
                to moldings around the edge of the panel of automotive glass flows from the                  
                teachings of the references themselves, mainly from the teachings of the                     
                problems in the art and their solutions.  “[A]ny need or problem known in                    
                the field of endeavor at the time of invention and addressed by the patent can               
                provide a reason for combining the elements in the manner claimed.”  KSR,                    
                127 S. Ct. at 1742, 82 USPQ2d at 1397.                                                       





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