Appeal No. 95-4118
Application 07/600,799
Thus, we reverse the ground of rejection based on Tennent alone.
Turning now to the ground of rejection based on the combined teachings of Tennent and Hess
(answer, sentence bridging pages 5-6), we agree with the examiner that Hess would have taught one of
ordinary skill in the art that conductive floor coating compositions that contain a binder and carbon
fibers “can be given any color” (Hess, page 3) and thus overcomes the same problem faced by
appellants, that is, the “dark gray or black color” imparted to conductive floor coatings wherein the
binder contains “graphite powder” (answer, pages 6 and 9; first supplemental answer, page 4; third
supplemental answer of October 13, 1995 (Paper No. 22), pages 1-2). However, appellants point out
that the carbon fibers of Hess “are grossly dissimilar to the carbon fibers required by the present
claims,” which include amended claim 1 as it stands before us (reply brief, page 3). The examiner
responds that he “has not suggested that the fibers of [Hess] be substituted for the fibers of Tennent,
only that lighter colored coating could be made using carbon fibers as a conductive filler as opposed to
graphite” (first supplemental answer, page 2). We, like appellants, find no reason why one of ordinary
skill in this art would have modified the composites of Tennent, in which the carbon fibers are used for
structural reinforcement and, we observe, for conductivity (col. 8, lines 1-2), to contain color in the
manner suggested by Hess for floor coating compositions, or alternatively, why one of ordinary skill in
this art would have substituted the carbon fibers of Tennent, encompassed by amended claim 1, for the
carbon fibers of different dimensions used by Hess in the floor coating compositions. Indeed, it is again
inescapable that the only direction to appellants’ claimed coating compositions on this record is
provided by appellants’ own application. See generally, Vaeck, supra; In re Laskowski, 871 F.2d
115, 10 USPQ2d 1397 (Fed. Cir. 1989).
Thus, we reverse the ground of rejection based on the combined teachings of Tennent and
Hess.
The examiner’s decision is reversed.
Remand To The Examiner
This application is remanded to the examiner to consider whether claims 1 through 11, 13, 14,
17 and 47 are unpatentable under § 103 over the combined teachings of Friend and Tennent. Friend
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