Appeal No. 96-3533
Application 08/203,624
from the record that issues raised by the examiner of whether “[a]ir nozzle spray guns are conventional
and commonplace in the coating art” and whether “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”
also were made with respect to claim 6 and were at least noticed by appellants in their reply brief with
respect to claim 6. Thus, these issues were placed squarely before appellants in the answer and in the
supplemental answer, providing appellants with the opportunity to respond to the examiner’s findings in
the answer in their reply brief and in their supplemental brief. Appellants did not challenge the
examiner’s findings in either of these briefs, noting only in the former that the limitation of claim 6 is “a
feature not taught or suggested by Morgan.” Because appellants did not take either opportunity to
challenge the examiner’s notice that “[a]ir nozzle spray guns are conventional and commonplace in the
coating art,” we considered the examiner’s findings to be conclusive, although we did not expressly so
state in our opinion. See generally, In re Ahlert, 424 F.2d 1088, 1091-92, 165 USPQ 418, 420-21
(CCPA 1970).
Following the lead of the examiner that “[a]ir nozzle spray guns are conventional and
commonplace in the coating art,” we pointed out in the section of our original opinion set forth above, to
the admission in appellants’ specification 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.’” We then separately discussed the issue of whether “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,” and concluded on the combined teachings of
Gamble and Morgan, along with the admission as to claim 6, that “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,” which did not emphasize the issue of the
conventionality of “air nozzle spray guns.”
Thus, while we recognized that appellants’ disclosure contained an acknowledgement that “air
nozzle spray guns” were known in the art, as noticed by the examiner, it is apparent that the position
advanced by the examiner was indeed the basis for the ground of rejection on appeal with respect to
claims 5 and 6 and our affirmance thereof with respect to these claims. Therefore, we did no more in
- 5 -
Page: Previous 1 2 3 4 5 6 7 8 9 10 11 12 13 14 Next
Last modified: November 3, 2007