Appeal No. 95-1148
Application 07/873,345
et al.,3 Floyd et al. and Hoy et al.4 We do so even though we recognize that the record before us
can be considered to be incomplete.5
As a simple matter of claim construction, the water-borne, water-reducible or water-
dispersible coating compositions as claimed must contain a specific nitrogen-containing
compound falling within the Markush recitation which defines these compounds. See generally In
re Ruff, 256 F.2d 590, 118 USPQ 340 (CCPA 1958). In the same manner, the claimed methods
of making coating compositions require the addition of a specific nitrogen-containing
3 Smith et al. and the other references relied on by the examiner with respect to the grounds of
rejection are listed at page 3 of the answer. We refer to these references in our opinion by the
name associated therewith by the examiner.
4 The examiner has withdrawn the grounds of rejection based on the Union Carbide Product
Information Bulletin (RD 65-2) (answer, page 2).
5 The examiner’s answer (Paper No. 20) does not fully set forth an explanation of the grounds of
rejection on appeal including the two new grounds of rejection based on Hoy et al. which were
not so identified. See 37 CFR § 1.193(a) (1993); MPEP §§ 1208 and 1208.01. The examiner set
forth a statement of each of the six grounds of rejection only under section “(4) Issues” and not
under section “(9) Grounds of rejection” or section “(10) New grounds of rejection”in the answer
(pages 2-4). Under the latter sections, there was no explanation of any of the grounds of rejection
as the examiner merely pointed to certain portions of Smith et al. and Floyd et al., but not Hoy et
al., with respect to the “recitation of limitations for claim 1” and portions of all three references
with respect to the “recitation of limitations for claim 36” in section “(9) Grounds of rejection.”
Indeed, no prior office action was even identified as providing an explanation for any ground of
rejection. Thus, the extent of the explanation provided as to any of the grounds of rejection in the
answer is found in the discussion of appellants’ arguments in section “(11) Response to argument”
(pages 4-9). The stated grounds of rejection of claims 12 through 20 and 29 through 57 under §
102 over Hoy et al. and of claims 20 through 57 under § 103 over Hoy et al. (answer, page 2)
constitute new grounds of rejection since in the final rejection (Paper No. 16; pages 4 and 5), Hoy
et al. was relied on to reject only claims 12 through 20 under § 102 and claims 20 through 35
under § 103. Furthermore, even though appellants argued the grounds of rejection over Hoy et al.
as stated in the final rejection, the examiner responded as if these grounds of rejection
encompassed claim 1 (answer, pages 7-8). Since appellants did not, of course, argue the rejections
of claims 29 through 57 under § 102 and of claims 36 through 57 under § 103 over Hoy et al. in
their brief, the examiner provided no explanation with respect to the thus newly rejected claims.
Appellants did not submit a reply brief with respect to the new grounds of rejection and the
examiner did not require one. See 37 CFR 1.193(b); MPEP §§ 1206 (1200-7), 1208 (1200-15)
and 1208.01. Because we can dispose of this appeal based on the record before us, in the interest
of prosecution economy we will not require that these formal and procedural matters be
addressed.
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