Appeal No. 2002-2063
Application No. 09/635,093
The Rejection of Claims 12-29 Under 35 U.S.C. § 103 (a)
The examiner has found that Furness teaches compositions
including a phenolic resin having phenolic OH groups and alcoholic
OH groups, polyisocyanate, solvent, and FAME. (Examiner’s Answer,
page 2, lines 23-25). The examiner has further found that Furness
discloses 5-8% methyl ester of stearic acid. (Examiner’s Answer,
page 3, lines 4-8). The examiner then concludes that it would
have been obvious to formulate compositions including the phenolic
resin having phenolic OH groups and alcohol OH groups, isocyanate,
solvent, and methyl ester of stearic acid as such compositions are
suggested by Furness (Id., lines 14-22).
The appellants raise numerous issues in their comprehensive
39 page brief on appeal. The issues can be categorized, for ease
of discussion, into three areas - (1) claim interpretation, (2)
reference interpretation, and (3) secondary considerations. Both
the examiner and the appellants make conflicting and erroneous
statements of fact and law, which requires us to start anew lest
we get lost in the welter of disjointed arguments that prosecution
of this application has become.
Claim Interpretation
We need consider the scope and meaning of certain terms that
appear in appealed claim 12. See Gechter v. Davidson, 116 F.3d
1454, 1457, 1460 n.3, 43 USPQ2d 1030, 1032, 1035 n.3 (Fed. Cir.
3
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