Appeal No. 95-1148
Application 07/873,345
the record does not contain objective teachings or suggestions in the applied prior art taken as a
whole and/or evidence of knowledge generally available to one of ordinary skill in the art which
would have led that person to modify the coating compositions and methods of making the
coating compositions taught in these references in order to arrive at the claimed invention of using
a specified nitrogen containing compound per se in the coating composition without recourse to
the teachings in appellants’ disclosure. See generally In re Oetiker, 977 F.2d 1443, 1447-48, 24
USPQ2d 1443, 1446-47 (Fed. Cir. 1992) (Nies, J., concurring); In re Vaeck, 947 F.2d 488, 493,
20 USPQ2d 1438, 1442 (Fed. Cir. 1991); In re Fine, 837 F.2d 1071, 1074-1076, 5 USPQ2d
1596, 1598-1600 (Fed. Cir. 1988); In re Dow Chemical, 837 F.2d 469, 473, 5 USPQ2d 1529,
1531-32 (Fed. Cir. 1988); In re Warner, 379 F.2d 1011, 1014-17, 154 USPQ 173, 176-78
(CCPA 1967), cert. denied, 389 U.S. 1057 (1968).
Turning now to the grounds of rejection based on Hoy et al. (see supra note 5), while we
agree with the examiner that the reference teaches coating compositions containing a
thermosetting resin and a nitrogen containing compound as specified in the appealed claims and
are disclosed to have good gloss6 (e.g., Hoy et al. Example 4, pages 7-8), we do not find that this
reference anticipates or conclude that this reference would have rendered obvious any of the
claims on appeal. There are a number of differences between the claimed coating compositions or
methods of making these compositions and the coating compositions of Hoy et al. First, all of the
claims on appeal specify that the coating compositions are water-borne, water-reducible or water-
dispersible. However, it is clear that the coating compositions disclosed in Hoy et al. require the
“use of nearly non-volatile substituted ureas as reactive diluents and reactive
6 With respect to appellants’ argument that the property of enhanced gloss recited in the appealed
claims distinguishes over Hoy et al. (brief, page 10), we note that it is well settled that the
recitation of a new property with respect to a claimed product or method does not establish the
patentability of an otherwise anticipated or obvious product or process. See, e.g., In re Woodruff,
919 F.2d 1575, 1577, 16 USPQ2d 1934, 1936 (Fed. Cir. 1990); In re Spada, 911 F.2d 705, 707-
08, 15 USPQ2d 1655, 1657 (Fed. Cir. 1990); Titanium Metals Corp. v. Banner, 778 F.2d 775,
782-83, 227 USPQ 773, 779 (Fed. Cir. 1985).
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