Appeal No. 1996-3977
Application 08/232,627
that “[t]he title of the invention refers to a coating having ‘tailorable’ properties” and point to page 4 of
the specification for the concept that the proportions of the components of a “coating system” can be
varied “to realize . . . differing thermal properties” (principal brief, page 8; see also supplemental reply
brief, pages 4-5). The examiner contends that claim 16 “does not require the particular coating to vary
over the entire range” of absorptance and emittance (answer, pages 9-10). We agree with the
examiner.
We find that one of ordinary skill in this art would interpret the above quoted clause of claim 16
in light of the plain meaning of the claim language and appellants’ specification to read on “preparing” a
single “selected composition of a multicomponent coating,” that is, a single “composition” which has a
measured absorptance and a measured emittance that falls within the range of absorptance and
emittance specified in claim 16 for the “multicomponent coating” system.
Accordingly, in view of the interpretation that we have made of claim 16, and in the absence of
a showing by appellants that the coating compositions disclosed in Shai, e.g., Shai Examples 2, 3 and 5,
do not fall within the absorptance and emittance ranges specified for a multicomponent coating system
in claim 16, we affirm the ground of rejection of claims 16 and 19 under § 102(b) as being anticipated
by Shai.
We cannot affirm the ground of rejection of claims 1 through 15, 17, 18 and 20 under §
103 as being obvious over the combined teachings of Shai and Cordaro. In interpreting the terms of
appealed claim 1 in light of appellants’ specification as it would be interpreted by one of ordinary skill in
this art, Morris, supra; Zletz, supra, we must agree with appellants that the term “mixture” indeed has
its well known ordinary meaning of an admixture of individual, separate ingredients (e.g., reply brief,
page 4). Thus, because the radiation hardened, aluminum-doped zinc oxide of Cordaro does not
contain free aluminum per se, we agree with appellants (principal brief, page 10) that at best, the
combination of references would have motivated one of ordinary skill in this art to replace the zinc
oxide used in the preparation of the compositions of Shai (e.g., Shai Method A) with the aluminum
containing zinc oxide of Cordaro, which would not result in the coating mixture specified in appealed
claim 1. See Uniroyal, Inc. v. Rudkin-Wiley Corp., 837 F.2d 1044, 1050-54, 5 USPQ2d 1434,
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