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
-7-7
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