Appeal No. 1997-2330 Page 6
Application No. 08/398,315
Specification which says that the water-soluble coalescent “may be present as a result of coalescent use
in the manufacture of a component in the coating composition such as, for example, the polyurethane
dispersion.” The Examiner then states that “inclusion of such coalescence would meet the present claim
limitation.” (Answer, page 7).
Appellants’ Specification indicates that the water-soluble coalescent “may be separately added
or may be present as a result of coalescent use in the manufacture of a component in the coating
composition...” Therefore, the Specification indicates that no matter which way the coalescent is
introduced, it must be affirmatively present in the end product coating. This is consistent with the
claims. Claim 1 requires admixing the water-soluble coalescent with the aqueous coating composition.
Claim 4 is directed to an aqueous coating composition containing water-soluble coalescent.
The question is: Does Werner teach or suggest inclusion of a water-soluble coalescent in a
coating composition as required by the claims? We answer no. Werner does disclose using ethylene
glycol in the formation of a polyester urethane which can constitute the polyurethane dispersion.
However, there is no disclosure that any ethylene glycol remains unreacted or that one of ordinary skill
in the art would have sought to leave any unreacted. Therefore, mixing the polyurethane dispersion with
the latex as taught by Werner would not have necessarily resulted in a coating composition containing
ethylene glycol as a water-soluble coalescent. Furthermore, the Examiner has pointed to no reason,
suggestion or motivation in the prior art for adding an excess which would have remained unreacted.
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