Appeal No. 2004-1131
Application 09/562,632
the epoxy group of the silane coupling agent and an acid group of the resin dispersion is required
by any claim limitation (id., page 6). The examiner submits that the epoxysilane coupling agents
of Hatano and Tsuno would be expected to function as coupling agents in the compositions of
Kubitza, improving the adhesive capabilities thereof, and appellants have not pointed to evidence
of record that establishes otherwise (id.).
We find that Kubitza does teach that the disclosed coating compositions can be used for,
inter alia, “the painting and coating of metal surfaces” (col. 7, line 1), but does not disclose using
any silane coupling agent, as appellants point out. Appellants acknowledge that “adhesion
problems have been observed with these [acknowledged] aqueous [two component]
[polyurethane] systems after application on special substrate surfaces, especially untreated metal
surfaces such as aluminum, galvanized steel and car body sheet (USt 1405 steel sheet)” which
“can then lead to undesirable signs of corrosion” (specification, page 2; see also page 1). Thus,
on this record, we find that one of ordinary skill in this art would have readily observed that such
aqueous coating compositions can corrode metal surfaces, see In re Goodman, 339 F.2d 228,
232-33, 144 USPQ 30, 33-34 (CCPA 1964), and there is no evidence that recognition of this
problem is part of appellants’ claimed invention. See, e.g., In re Ludwig, 353 F.2d 241, 243,
147 USPQ 420, 421 (CCPA 1965); In re Sponnoble, 405 F.2d 578, 585, 160 USPQ 237, 243
(CCPA 1969). It is well settled that “[t]he significance of evidence that a problem was known in
the prior art is, of course, that knowledge of a problem provides a reason or motivation for
workers in the art to apply their skill to its solution.” In re Nomiya, 509 F.2d 566, 574,
184 USPQ 607, 613 (CCPA 1975). Therefore, we are of the view that one of ordinary skill in
this art would have addressed the problem of adhesion of the aqueous coating compositions on
metal surfaces leading to corrosion.
We find that Hatano discloses solvent-less isocyanate-terminated polyurethanes which
can be used as hot-melt adhesive agent coating compositions for metal foils, such as aluminum
and steel foils, in a laminate and moisture cured (cols. 1-3, 4-7 and 11-15). The polyol can be a
polyether or a polyester, and when a polyester is used, it is prepared from a diol and a
dicarboxylic acid (cols. 7-9, particularly col. 8, lines 8-48). We note in the latter respect, that
there is no limitation in Hatano on the ratio of diol to dicarboxylic acid in forming the polyester,
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