Appeal No. 1998-1573
Application 08/599,840
structurally similar chemicals, such as polyphenylene oxide and methyl-substituted polyphenylene oxide,
would have imparted the same or substantially the same properties after the claimed heat-treatment. In
re Lamberti, 545 F.2d 747, 751, 192 USPQ 278, 281 (CCPA 1976); Zickendraht, 319 F.2d at
228, 138 USPQ at 24-25
In reaching this conclusion, we recognize that Whittemore does not mention improving corrosion
resistance as recited in the appealed claims. However, corrosion resistance is another advantage, which
admittedly naturally results from good adhesion. This additional advantage, therefore, would have
naturally flowed from the suggestion of Whittemore. Skoner 517 F.2d at 950, 186 USPQ at 83
(explaining that unpatentable subject matter does not become patentable Amerely through the
employment of descriptive language not chosen by the prior art@); Ex parte Obiaya, 227 USPQ 58, 60
(Bd. Pat. App. & Int. 1985)(holding that the recognition of another advantage flowing naturally from
following the suggestion of the prior art cannot be the basis for patentability when the difference would
otherwise be obvious). .
The fact that Whittemore teaches halide alkyl-substituted polyphenylene oxide coatings adhering
well to a metal article after heating further supports obviousness. When both halide alkyl-substituted
polyphenylene oxide and polyphenylene oxide coatings adhered well to a metal article after heating, one
of ordinary skill in the art would have reasonably expected that an alkyl (inclusive of methyl)-substituted
polyphenylene oxide coating likewise would adhere well to a metal article after heating. One of ordinary
skill in the art would have interpolated from these teachings that heating, especially at least conventional
drying, is necessary and useful for improving adhesion and hardness of the alkyl-substituted
polyphenylene oxide coating.
CHUNG K. PAK ) BOARD OF PATENT
Administrative Patent Judge ) APPEALS AND
2 The claimed heat treatment includes conventional air drying which is normally used to drive off solvent
in a liquid coating after an article is coated.
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