Appeal No. 1998-1573
Application 08/599,840
The appealed claims as represented by claim 11 are drawn to an improvement in the
known process of coating a metal article with an alkyl-substituted polyphenylene oxide (PPO) which
comprises at least heat treating the PPO-coated metal article in air to enhance the corrosion protection
of the PPO-coated metal article, that is, “as compared to an analogous coated metal article that has not
been heat treated” according to appellant (specification, page 4).
The references relied on by the examiner are:
Davis et al. (Davis) 3,455,736 Jul. 15, 1969
Whittemore et al. (Whittemore) 3,471,587 Oct. 7, 1969
Gay et al. (Gay) 5,271,891 Dec. 21, 1993
The examiner has advanced the following grounds of rejection on appeal:
claims 1 through 10 stand rejected under 35 U.S.C. § 103 as being unpatentable over Whittemore;
claims 1 through 4 and 6 through 10 stand rejected under 35 U.S.C. § 103 as being unpatentable over
Gay;
claim 5 stands rejected under 35 U.S.C. § 103 as being unpatentable over Gay further in view of Davis;
and
claims 1 through 3 and 6 through 10 stand rejected under 35 U.S.C. § 103 as being unpatentable over
the admitted state of the art in appellant’s specification.
While we affirm the examiner's decision refusing to allow the claims based on Whittemore
because we agree with the examiner's conclusion that the claimed subject matter would have been
obvious over this reference, we designate our affirmance as involving a new ground of rejection pursuant
to 37 CFR § 1.196(b) (1997) since our reliance on Whittemore materially differs from that of the
examiner as set forth below, as to which appellant has not had an opportunity to respond. See In re
Eynde, 480 F.2d 1364, 1370-71, 178 USPQ 470, 474-75 (CCPA 1973).
We reverse all of the other grounds of rejection.
Rather than reiterate the respective positions advanced by the examiner and appellant, we refer
to the examiner’s answer and to appellant’s brief for a complete exposition thereof.
Opinion
1 Appellant state in their brief (page 3) that “all of the appealed claims stand or fall together.” Thus, we
decide this appeal based on appealed claim 1. 37 CFR § 1.192(c)(7) (1995).
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