Appeal No. 1998-2733
Application 08/718,613
description of the specification to be preferred and to be “undesirable.” In view of the clear dichotomy
between the disclosure of Ukai and the arranged evidence in the affidavit, it is difficult on this record to
see how any of the anions set forth in the specification, including the preferred “FC-98” salt,5 used in a
formulation in the affidavit (¶¶ 8 through 10 and 18, and Table 1), could perform in all possible
polyurethane and/or urea group providing formulations in a manner so as not to be considered
“incompatible” and/or “undesirable” in even one of them by at least one of ordinary skill in this art, thus
passing the test for exclusion, and appealed claim 10 does encompass all such formulations.
Accordingly, on this record, we must conclude that the written description at lines 23-26 of
page 8 of the specification does not provide a “definition” of the term “non-volatile metal salt” which
particularly points out and distinctly claims the subject matter which appellants regard as their invention
within the meaning of § 112, second paragraph, if applied as a modification of the common meaning of
the claim term. Thus, we interpret the term as having its common, unlimited meaning in the art of a metal
salt that is non-volatile and will not read into any appealed claim any limitation found in the specification
because there is no basis in any of the claims to do so. See, e.g., Zletz, supra. Thus, we agree with the
examiner that none of the appealed claims exclude non-volatile thiocyanate metal salts.
In applying Ukai to appealed claim 10, as we have interpreted it above, we find that, prima
facie, the reference would have specifically disclosed to one of ordinary skill in the art polymer
formulations containing materials which include or form urethane groups and a non-volatile sodium
thiocyanate salt that is formed into polymers which are shaped into objects that are efficiently
electrostatically painted (e.g., pages 2, 3, 4-5 and 6-7), thus meeting all of the limitations for the claimed
painted object defined in claim 10. Indeed, Ukai as a whole clearly and unequivocally directs one of
ordinary skill in the art to the claimed invention without any need for picking, choosing, and combining
various disclosures not directly related to each other by its teachings. See In re Arkley, 455 F.2d 586,
587, 172 USPQ 524, 526 (CCPA 1972). Thus, while the issue here has been framed by the examiner
as one of obviousness under § 103, it is apparent that Ukai describes a painted object that falls within
appealed claim 10, which is indeed evidence of a lack of novelty of the claimed invention as
5 “FC-98 is a trade designation of 3M and is a mixture of potassium perfluoro cyclohexyl alkyl
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