Appeal No. 1996-0191
Application 08/001,697
etherified melamine derivatives can be used to cure hydroxyl-functional acrylic and polyester powder
coating resins, none of which is “melamine” per se as disclosed in Kajiura or contains a pyrrolidonyl
moiety as does tris-pyrrolidonyl triazine which is taught in this reference. Furthermore, contrary to the
examiner’s allegation (answer, page 6), we find that Macholdt would not have suggested to one of
ordinary skill in this art to use a melamine derivative to cure epoxy resins, whether in powder
compositions as in this reference or as “all-purpose resins” as in Kajiura (page 8), and we agree with
appellants that Macholdt “does not ‘establish’ the equivalency between the ‘phenol [sic, phenolic]
resin’ of [Kajiura] and the hydroxyfunctional resins of the five other primary references” (brief, page
10). Thus, at best, the use of crosslinking agents containing a triazine ring in the powder compositions
as disclosed by the combined teachings of Iwasawa, Wooten and Macholdt would have suggested to
one of ordinary skill in this art “to try” other triazine ring containing crosslinking agents, including the
tris-pyrrolidonyl triazine of Kajiura, which is “not the standard under § 103.” In re O’Farrell, 853
F.2d 894, 903-04, 7 USPQ2d 1673, 1681 (Fed. Cir. 1988) (“In [other cases], what was ‘obvious to
try’ was to explore a . . . general approach that seemed to be a promising field of experimentation
where the prior art gave only general guidance as to the particular form of the claimed invention or how
to achieve it. [Citations omitted.]”).
Accordingly, it is manifest that the only direction to appellants’ claimed invention as a whole on
the record before us is supplied by appellants’ own specification. In re Vaeck, 947 F.2d 488, 493, 20
USPQ2d 1438, 1442 (Fed. Cir. 1991), citing In re Dow Chemical Co., 837 F.2d 469, 473, 5
USPQ2d 1529, 1531(Fed. Cir. 1988)(“Both the suggestion and the reasonable expectation of success
must be founded in the prior art, not in the applicant’s disclosure.”).
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