Appeal No. 96-3533
Application 08/203,624
rationale and different evidence” than advanced by the examiner in the answer because the examiner
relied “only on Gamble combined with Morgan throughout the prosecution “without any mention of any
alleged prior art admissions” (request, pages 3-5). While we agree that the examiner did not rely on
admitted prior art in the ground of rejection, we cannot agree that appellants’ analysis adequately
reflects the record.
Appealed claim 5 modifies “[t]he method of claim 1, wherein the applying step comprises
spraying the coating material on the substrate” while claim 6 modifies “[t]he method of claim 1, wherein
the applying step is carried out with an air nozzle spray gun.” In explaining the ground of rejection in the
answer (pages 4-5), the examiner stated that “Morgan teaches that resin/fiber mixtures used as EMI
shields can be applied by spraying” in taking the position that one of ordinary skill in this art would have
reasonably expected “that the resin/fiber mixture of Gamble could be successfully applied by
spraying based on the combined teachings of Gamble and Morgan” (emphasis supplied). In
response to appellants’ arguments in their principal brief specifically directed to claims 5 and 6, i.e.,
“Morgan fails to provide the necessary incentive or motivation to modify Gamble in a manner which
would result in a coating applied to a substrate much less applying the coating by spraying,” (page 14),
the examiner stated (answer, page 9; emphasis supplied):
Claim 5 recites spraying. Morgan clearly teaches spraying.
Claim 6 recites that the applying step is carried out using an air nozzle spray gun. Morgan is
silent regarding the type of spray gun to be used. Since Morgan is silent with respect to the
type of spray gun to be used, the skilled artisan would have to turn to the prior art to find a
suitable spray gun to use. Air nozzle spray guns are conventional and commonplace in the
coating art and the skilled artisan would have had a reasonable expectation that an air
nozzle spray gun would successfully function as the generic spray gun of Morgan.
In their reply brief (page 9), appellants point out in argument with respect to claims 3 and 4 that
“the fact that Morgan fails to disclose how the spraying is performed cannot possibly be a disclosure of
pressurizing a container,” and state that “[t]he same reasoning applies to Claim 6 which recites that the
applying step is carried out with an air nozzle spray gun, a feature not taught or suggested by Morgan.”
The examiner stated in the supplemental answer (page 3), that the limitations of claim 6 “were
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