Appeal No. 1998-1834
Application No. 08/467,631
THE REJECTIONS
Claims 1-3 and 5 stand rejected under 35 U.S.C. § 102(b) as anticipated by
or, in the alternative, under 35 U.S.C. § 103 as unpatentable over Bors1, Spada or
Smith.
On consideration of the record, we reverse each of these rejections.
DISCUSSION
As stated in In re Spada, 911 F.2d 705, 708, 15 USPQ2d 1655, 1657 (Fed.
Cir. 1990), “[r]ejection for anticipation or lack of novelty requires, as the first step in
the inquiry, that all the elements of the claimed invention be described in a single
reference.” Here, the examiner has not established that Bors describes a
“coalescent-free” coating composition as recited in claim 1. Nor has the examiner
established that Bors describes a coating composition comprising “an aqueous
emulsion-polymerized polymeric binder having a glass transition temperature from
about -15ēC to about +15ēC.”
1 As the case is briefed before us, Bors is relied on under 35 U.S.C. § 102(b).
Bors does not reasonably appear to be prior art within the meaning of 35 U.S.C.
§ 102(b). However, the patent does appear to constitute prior art under 35 U.S.C. §
102(e). Appellants have not disputed the examiner’s position that Bors constitutes
prior art to this invention.
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