Appeal No. 95-4118
Application 07/600,799
We have carefully considered the record before us, and based thereon, find that we cannot
sustain the grounds of rejection under 35 U.S.C. § 103 over Tennent alone or combined with Hess. 4,5
Our review of these grounds of rejection begins with consideration of the problem, acknowledged by
appellants, of electrostatically overcoating with a finishing coat the electrical conductive primers on auto
parts made from sheet molding compound (SMC), wherein the conductivity is provided by “relatively
large amounts of conductive carbon black” in the primer with the “resultant disadvantage in that [the
primers] tend to be black or very dark gray in color” (specification, page 1). See generally In re
Hedges, 783 F.2d 1038, 1039-40, 228 USPQ 685, 686 (Fed. Cir. 1986); In re Nomiya, 509 F.2d
566, 570-71, 184 USPQ 607, 611 (CCPA 1975). Appellants’ solution to the problem is the primer
coating composition encompassed by claim 1, as amended, wherein a resinous film forming binder is
combined with a light colored pigment and a fibrous, carbonaceous material which has the specified
dimensions, wherein the coating composition when cured on the substrate is electrically conductive and
has a Munsell value of more the 3.5.
Appellants further acknowledge in their specification that the fibrous, carbonaceous material is
found, inter alia, in Tennent (specification, page 5). In the ground of rejection based on Tennent
alone, the examiner has compared the claimed composition encompassed by claim 1 with Tennent and
finds that all of the differences between the claimed compositions and the teachings of this reference are
so notoriously well known in the art to one of ordinary skill in this art that no other reference is
necessary to support his holding that the appealed claims would have been prima facie obvious to this
person based on Tennent alone (answer, pages 3-5 and
4Tennent and Hess are listed at page 2 of the answer. We refer in our opinion to the translation of
Hess provided by appellants in their information disclosure statement of March 10, 1993 (Paper No.
13).
5The examiner entered the ground of rejection based on Tennent in view of Hess as a new ground of
rejection in the answer (page 5). The examiner also entered new grounds of rejection of claim 12 under
35 U.S.C. § 112, fourth paragraph, and of claims 12 and 13 under § 112, fourth paragraph, in the
answer (page 5). Upon cancellation of claim 12 by appellants (see supra note 2), the examiner, in the
first supplemental answer, indicated that the ground based on § 112, fourth paragraph, was moot and
withdrew the ground based on § 112, second paragraph, with respect to claim 13.
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