Appeal No. 96-3533
Application 08/203,624
thoroughly addressed” in the section of the answer we set forth above. Appellants did not respond
further with respect to this matter in their supplemental reply brief.
In considering claims 5 and 6, we stated in our original opinion (pages 10-11):
With respect to claims 5 and 6, we find that appellants admit that coating material
compositions comprising at least fibers contained in a resin matrix were known in the art to
be applied to a substrate by “spraying” with an “air nozzle spray gun” in disclosing that
standard top-feed pressure-pot spray systems with either external- or internal-mix
needle valve spray guns have been found to promote fiber clumping and breakage
since they do not provide a smooth, unrestricted passage for the fiber containing
matrix. [Page 4, lines 7-10; emphasis supplied.]
We point out with respect to this disclosure that there is no limitation in the appealed claims
which specifies the condition of the fibers in the spray nozzle during the spraying action (see
supra pp. 5-6). Even if the claims contained such a limitation, the selection of solvents which
facilitate spraying of an EMI coating composition that can contain conductive fibers was
within the ordinary skill in the art as seen from the teachings of Morgan (e.g., col. 4, line 45,
col. 5, lines 26-42, col. 6, lines 7-15 and 30-44).
Furthermore, in addition to appellants’ admission, we find that Morgan would have
reasonably suggested to one of ordinary skill in this art that coating material compositions,
such as those taught in Gamble, can be applied to a substrate by spraying because Morgan
teaches that this method is one of a number of conventional coating techniques which can be
used with coating compositions containing fibers and resin (e.g., col. 4, line 45, and col. 6,
lines 7-11) and, as we found above, discloses that the solvent used in the compositions
should be selected accordingly. Indeed, Gamble does not limit the manner in which the
compositions disclosed therein can be applied to a substrate and further discloses that
“[v]arious chemical additives” can be added to these compositions “for their art-recognized
purposes” (col. 6, lines 35-40). Thus, the compositions of Gamble can contain the same
solvents as contained by the compositions of Morgan, which compositions would fall within
those used in the claimed methods of the appealed claims. Accordingly, one of ordinary skill
in this art following the combined teachings of Gamble and Morgan in light of the knowledge
in the art as admitted by appellants, prima facie, would have applied the compositions of
Gamble to a substrate using conventional spraying methods with the reasonable expectation
of forming a coating on the substrate. [Citations omitted.]
In considering appellant’s arguments, we referred to the limitation “to a specific type of spray gun (claim
6, dependent on claim 1) (see reply brief, page 9)” (opinion, page 12).
On this record, it is apparent that the issue of whether the “applying step is carried out with an
air nozzle gun” is limited to claim 6 as this limitation does not appear in claim 5. It is further apparent
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