Appeal No. 95-0442
Application 08/026,183
As for the metal powder, Yamamoto teaches that “in order
that steel plate coated with the epoxy resin composition can be
welded after heat curing the coating, a metal powder is added to
the composition” (col. 4, lines 44-47). Yamamoto provides
Comparative Example 3 (Table 1) which differs from Example 1,
which illustrates Yamamoto’s invention, only in that the
composition in Comparative Example 3 contains no metal powder and
contains less solvent than the composition in Example 1.
Yamamoto’s Table 1 shows that the composition of Comparative
Example 3 produces a film which is comparable to that in Example
1 in adhesiveness and all other listed properties except
weldability. In view of this disclosure and the teaching by
Yamamoto that the composition can be used for coating various
articles in various fields (col. 5, lines 20-22), one of ordinary
skill in the art would have had been motivated to use the
composition, without the metal powder being present, to coat
articles which are not to be welded, and would have had a
reasonable expectation that an adherent coating would be
obtained. See In re Vaeck, 947 F.2d 488, 493, 20 USPQ2d 1438,
1442 (Fed. Cir. 1991); In re O’Farrell, 853 F.2d 894, 902, 7
USPQ2d 1673, 1680 (Fed. Cir. 1988); In re Longi, 759 F.2d 887,
892-93, 225 USPQ 645, 648 (Fed. Cir. 1985).
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