Appeal No. 95-4118
Application 07/600,799
clearly discloses coating compositions containing between 1 and 4% by weight of the carbon fibers
disclosed by Tennent along with one or more pigments, and indeed, when used as a
primer for electrostatic overcoating on auto parts made from sheet molding compound (SMC), the
coating “can be overpigmented so that the finished composite does not appear black” (Friend, col. 1,
lines 15 and 35-44, col. 2, lines 17-62, and col. 3, line 17, to col. 4, line 2).
We observe that appellants withdrew the declaration and supplemental declaration of record
under 37 CFR § 1.131 submitted to antedate Friend, the latter filed on October 25, 1994 (no separate
paper number), in the second supplemental reply brief subsequent to the examiner’s analysis of the
combined submissions in the second supplemental answer of January 4, 1995 (Paper No. 20). In the
event that appellants again rely on these declarations, the examiner should consider whether Friend is
claiming the “same patentable invention, as defined in § 1.601(n),” as encompassed by any or all of
appealed claims 1 through 11, 13, 14, 17 and 47, in determining whether the declarations can be
considered under § 1.131.
Accordingly, we remand the case to the examiner for consideration of this matter consistent
with current examining practice and procedure and to further augment the record as required.
We hereby remand this application to the examiner, via the Office of a Director of the
Technology Center, for appropriate action in view of the above comments.
This application, by virtue of its “special” status, requires immediate action. See MPEP §
708.01(D) (7th ed., July 1998).
REVERSED and REMANDED
CHARLES F. WARREN )
Administrative Patent Judge )
)
)
)
TERRY J. OWENS ) BOARD OF PATENT
Administrative Patent Judge ) APPEALS AND
) INTERFERENCES
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