Appeal No. 95-0442 Application 08/026,183 We do not find in the evidence of record, however, an indication that it would have been obvious to one of ordinary skill in the art to eliminate the phenoxy resin from the Yamamoto composition. Yamamoto teaches that “[w]hen the phenoxy resin content is too small, sufficient flexibility and impact resistance cannot be obtained” (col. 4, lines 6-8). Thus, Yamamoto indicates that eliminating the phenoxy resin from the composition would render the composition unsuitable for its intended purpose of providing a flexible coating which is highly adhesive and is resistant to impact, heat and chemicals (col. 1, lines 59-65). Yamamoto therefore indicates that eliminating the phenoxy resin would not have been obvious to one of ordinary skill in the art. See Ex parte Rosenfeld, 130 USPQ 113, 115 (Bd. Pat. App. 1961). Appellants argue that the expression “consisting essentially of” in the preamble of appellants’ claim 1 excludes Yamamoto’s phenoxy resin because Yamamoto teaches that this resin materially affects the basic and novel characteristics of Yamamoto’s composition (brief, pages 3-4). This argument is not well taken because the relevant question is whether the phenoxy resin affects the basic and novel characteristics of appellants’ composition, not Yamamoto’s composition. See In re Herz, 537 -7-7Page: Previous 1 2 3 4 5 6 7 8 9 10 11 12 NextLast modified: November 3, 2007