Appeal No. 1996-0837
Application 08/603,014
temperature, but a viscous liquid at about 200EF to about 300EF and has a viscosity in the
range of about 5,000 cps to about 100,000 cps. Thus, we find that the examiner’s
rejection constitutes nothing more than an assertion that it would have been obvious to one
of ordinary skill in the art to add an epoxy resin to the hot melt gasket composition
described by Couturier.
Moreover, as developed in the appellants’ Brief, the references relied upon by the
examiner do not fall within the scope of relevant prior art. A reference is considered
relevant art if it “is within the inventor’s field of endeavor, and if it is not ...
[it must be] reasonably pertinent to the particular problem confronting the inventor.”
In re GPAC, Inc., 57 F.3d 1573, 1578, 35 USPQ2d 1116, 1120 (Fed. Cir. 1995). The
Couturier and Cleveland patents do not meet either criterion. The appellants’ field is
directed to coating compositions for containers made of substrates such as glass,
polyethylene, polypropylene, or polyvinyl chloride. Specification, p. 22. Neither Couturier,
which is directed to hot melt gaskets, nor Cleveland, which is directed to electrical cable
insulation, is within the appellants’ field of endeavor. In fact, Couturier and Cleveland are
not themselves within the same field of endeavor. Thus, we find that the examiner is
attempting to combine references from two totally different fields to establish the
obviousness of an invention in a third field. Under certain circumstances; i.e., when the
applied prior art addresses the same problem as that which was confronted by the
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