Appeal No. 1998-1573
Application 08/599,840
oxide and the metal surface treated prior to the application of the alkyl-substituted polyphenylene oxide
(specification, page 2, lines 7-25; see also pages 1-2), which processes would be encompassed by the
recitation in the preamble of claim 1. The acknowledged processes “known in the prior art to coat
metal surfaces with various phenylene oxide polymers to form coatings which provide some degree of
corrosion protection to the metal surfaces” include those that use unsubstituted polyphenylene oxide
(id., pages 1-2).
We find that Whittemore discloses spraying unsubstituted polyphenylene oxide onto the surface
of aluminum plates, drying the coated aluminum plates at 120° C. and baking the coated article at 285°
C. for about ½ hour (col. 7, lines 42-51), and further discloses in Example 8 thereof a similar process in
which an unprimed polished aluminum panel is sprayed with unsubstituted polyphenylene oxide in a
halobenzene solvent, air drying the coated article at 120° C. and baking the coated article at 315° C.
for about ½ hour. We further find that one of ordinary skill in this art would have recognized from the
data that is reported in the accompanying tables (cols. 7 and 10) that the purpose of the baking step is
to harden the surface of the unsubstituted polyphenylene oxide coated surface.
In comparing the knowledge in the prior art with the claimed process of appealed claim 1, we
determine that, prima facie, one of ordinary skill in this art armed with the knowledge that metal articles
can be coated with unsubstituted polyphenylene oxide as well as alkyl- substituted polyphenylene oxide
would have found in the teachings of Whittemore the reasonable suggestion to air dry an alkyl-
substituted polyphenylene oxide coated metal article at 120° C. and then baking the coated article at
between 285° C. or 315° C. for about ½ hour in the reasonable expectation of obtaining a hardened
surface. Indeed, one of ordinary skill in this art would have reasonably expected an alkyl-substituted
polyphenylene oxide, particularly methyl substituted polyphenylene oxide, to exhibit the same or similar
properties as a metal coating as unsubstituted polyphenylene oxide. Cf. In re Zickendraht, 319 F.2d
225, 228, 138 USPQ 22, 24-25 (CCPA 1963) (“[I]t is the closeness of . . . [the structural
relationship], a question of fact, which is indicative of the obviousness or unobviousness of the new
compound); In re Lohr, 317 F.2d 388, 389 &n.2, 137 USPQ 548, 549 &n.2 (CCPA 1963) (“The
important fact is that there is present here a close structural similarity, whether or not the compounds are
adjacent homologs.”). With respect to the limitation in appealed claim 1 that the surface of the coated
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