Appeal No. 95-1148
Application 07/873,345
compound. This requirement for the inclusion of a defined nitrogen-containing compound is the
same in all of the appealed claims, including claims 1 and 21 which are drawn in “Jepson” format.
See generally In re Fout, 675 F.2d 297, 299-301, 213 USPQ 532, 535-36 (CCPA 1982); In re
Ehrreich, 590 F.2d 902, 904, 200 USPQ 504, 510 (CCPA 1979). Thus, the claims require a
complete water-borne, water-reducible or water-dispersible coating composition containing a
specific nitrogen compound and a method of making such a composition by adding a specific
nitrogen compound to an otherwise complete water-borne, water-reducible or water-dispersible
coating composition. See Exxon Chemical Patents Inc. v. Lubrizol Corp., 64 F.3d 1553, 1555-
58, 35 USPQ2d 1801, 1802-05 (Fed. Cir. 1995)(“Consequently, as properly construed, Exxon’s
claims are to a composition that contains the specified ingredients at any time from the moment at
which the ingredients are mixed together.”).
In comparing the entire disclosure of Smith et al. and Floyd et al. with the appealed claims
as we have construed them above, it is readily apparent that the coating compositions prepared in
these references do not contain a nitrogen containing compound as specified in the appealed
claims and thus clearly do not anticipate these claims. It is well settled that in making out a prima
facie case of anticipation, each and every element of the claimed invention, arranged as required
by the claims, must be found in a single prior art reference, either expressly or under the principles
of inherency. See generally In re King, 231 USPQ 136, 138 (Fed. Cir. 1986); Lindemann
Maschinenfabrik v. American Hoist and Derrick, 221 USPQ 481, 485 (Fed. Cir. 1984). Indeed,
in Smith et al., the disclosure pointed to by the examiner (answer, pages 3-4) involves the 2-
hydroxypropyl maleate ester of 2-hydroxyethylene ethylene urea, which nitrogen containing
compound falls outside the defined group of nitrogen containing compound in the appealed claims
and is not per se included in the paint composition since it is copolymerized to form a vinyl acrylic
latex that is then used in the composition (see cols. 3 and 4). Similarly, in Floyd et al., the urea
compounds pointed to by the examiner (answer, pages 3-4), are reacted with glyoxal to form
blocked glyoxal resins which are contained in binder additives for paper coating compositions
(see, e.g., col. 2, lines 23-33, col. 3, lines 1-9 and 19-20, and Examples I, II, VI and VII). With
respect to the grounds of rejection under § 103 based on Smith et al. and on Floyd et al., we
cannot conclude that the claimed invention as a whole would have been prima facie obvious since
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