Ex parte EDWARDS et al. - Page 4



              Appeal No. 1996-0575                                                                                         
              Application No. 08/219,551                                                                                   


                                                     DISCUSSION                                                            

                                          The rejection under 35 U.S.C.  103                                              
              Claims 13-15, 17-21,23, 30-40, 48, 50-58, 62-63, 65-66, and 68-69:                                           

                    These claims are directed to a method of manufacturing a thermosettable                               
              solventless paint composition.  All of the claims require that a pigment is first dispersed in               
              a first defined resin and the resulting pigment-first resin mixture is then combined with a                  
              second defined resin to form the paint composition.                                                          
                     Obviousness is a legal conclusion based on the underlying facts. Graham v. John                       
              Deere Co., 383 U.S. 1, 17-18, 148 USPQ 459, 467 (1966); Continental Can Co. USA, Inc.                        
              v. Monsanto Co., 948 F.2d 1264, 1270, 20 USPQ2d 1746, 1750 (Fed. Cir. 1991); Panduit                         
              Corp. v. Dennison Mfg. Co., 810 F.2d 1561, 1566-68, 1 USPQ2d 1593, 1595-97 (Fed.                             
              Cir. 1987).   Here, the examiner has failed to make the finding of facts which would                         
              reasonably support a determination that the claims subject matter would have been prima                      
              facie obvious to those of ordinary skill in this art at the time of the invention.  The examiner             
              does not separately address any one of the method claims, but states at page 4 of the                        
              Examiner's Answer (Answer) "Such a composition can be prepared by melt blending the                          
              ingredients."  At page 6 of the Answer, the examiner states "Pettit teaches the                              
              composition with its ingredients including pigment/s (sic) as well as the method of                          
              preparation of the composition."  As noted by the appellants (Reply Brief, page 9):                          
                     Pettit, Jr. discloses a one step method of putting all of the resins and                              
                     pigments and other ingredients together and thoroughly blending them                                  
                     (column 7, lines 15-20).  The instant claimed method is a two step method                             
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