Appeal No. 1998-1573
Application 08/599,840
invention over the knowledge in the art acknowledged by appellant in styling the claim and as shown in
Whittemore. In re Skoner, 517 F.2d 947, 950, 186 USPQ 80, 82 (CCPA 1975). (“Appellants have
chosen to describe their invention in terms of certain physical characteristics . . . . Merely choosing to
describe their invention in this manner does not render patentable their method which is clearly obvious
in view of [the reference]. [Citation omitted.]”); cf. In re Woodruff, 919 F.2d 1575, 1578, 16
USPQ2d 1934, 1936 (Fed. Cir. 1990) (“It is a general rule that merely discovering and claiming a new
benefit of an old process cannot render the process again patentable. [Citations omitted.]”).
The extent to which inherency is considered here is whether the process of Whittemore applied
to alkyl-, particularly methyl-, substituted polyphenylene oxide coated metal articles would heat that
article to the extent that the corrosion resistance thereof is inherently increased. Skoner, 517 F.2d 947
at 950-51, 186 USPQ at 82-83. We expressed above the view that that a hardened surface would
reasonably appear to be more corrosion resistant than a softer metal surface in the absence of evidence
to the contrary. See id.
Accordingly, having considered appellant’s arguments of record as they pertain to the new
ground of rejection which we have applied above, we remain of the opinion that the claimed invention
encompassed by the appealed claims is prima facie obvious over Whittemore. Thus, the burden of
going forward with respect to this ground of rejection remains with appellant. See Johnson, supra;
Piasecki, supra.
With respect to the remaining grounds of rejection maintained on appeal by the examiner, we
have carefully reviewed the record and based thereon find ourselves in agreement with appellant that
these grounds cannot be sustained. While we agree with the examiner that one of ordinary skill in this
art would have been motivated to use an alkyl-substituted polyphenylene oxide in place of an
unsubstituted polyphenylene oxide in the process of Gay for essentially the reasons we stated above, on
this record, we cannot determine whether the heating of the coating on the metal particles which occurs
as the metal particles are recirculating during the coating process (e.g., col. 3, lines 45-56, and col. 5,
line 16, to col. 6, line 31) would inherently increase the corrosion resistance of the coated articles. See
Skoner, 517 F.2d 947 at 950-51, 186 USPQ at 82-83. Thus, we reverse the two grounds of
rejection based on Gay. Finally, with respect to the ground of rejection based on the admitted state of
- 6 -
Page: Previous 1 2 3 4 5 6 7 8 9 10 11 Next
Last modified: November 3, 2007