Ex parte KAZUYA ONO et al. - Page 7




             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                                        

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