Appeal 2006-2950
Application 10/036,126
hydrophilic ethyl methacrylate homo- and copolymers and polyurethanes,
together with gelatins and their derivatives, as exemplified film-forming
binders useful for given electrically conductive antistatic coating
compositions. Compare the Answer 5 with Brief 6. Therefore, we
determine that one of ordinary skill in the art would have been led to employ
appropriate or optimum film-forming binders, including latex polymers,
gelatins and gelatin derivatives, as the binder for the electrically conductive
antistatic composition of the type described in Muys, with a reasonable
expectation of successfully imparting the desired binding effect (adhesion).
In re Boesch, 617 F.2d at 276, 205 USPQ at 219 .
In any event, we note that Muys teaches (col. 8, ll.16-19) that:
The antistatic polymer layer of the present invention can be
coated with a hydrophilic subbing layer containing a certain
amount of hydrophilic colloid such as gelatin.
We find that this suggested combination results in the claimed composition.
In re Zierden, 411 F.2d at 1328, 162 USPQ at 104. This is especially true
since the claims on appeal, by virtue of using the transitional phrase
“comprises,” do not preclude additional components which are not
specifically recited. In re Baxter, 656 F.2d at 686, 210 USPQ at 802.
Although the combination is not said to be useful “for forming an
electrically conductive antistatic layer,” the Appellants have the burden of
showing that such functional limitation renders the claimed composition
patentably different from that of Muys since the compositions described by
Muys and recited in the claims on appeal contain identical components.
In re Schreiber, 128 F.3d at 1477, 44 USPQ2d at 1432; In re Best, 562 F.2d
at 1255-56, 195 USPQ at 433-34. On this record, the Appellants have not
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