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
4
Page: Previous 1 2 3 4 5 6 7 8 9 10 Next
Last modified: November 3, 2007