Appeal No. 1998-2000
Application 08/469,171
USPQ 173, 175-78 (CCPA 1967). We agree with appellants that the examiner has failed to carry his
burden of making out a prima facie case of obviousness with respect to the claimed invention.
The principal issue is whether one of ordinary skill in this art would have found in the combined
teachings of De Jongh et al. (De Jongh), Belder et al. (Belder) and Kapilow et al. (Kapilow)6 an
objective teaching, suggestion or motivation to use at most 10 mol-parts of isophthalic acid in a linear
carboxylic-functional polyester binder resin containing, inter alia, a further dicarboxylic acid, for a
powder coating system, as specified in claim 1 (answer, pages 4-6). The examiner contends that “the
specific amount [of isophthalic acid required by claim 1] is not recited [in the references] but would have
been found obvious . . . via routine experimentation” because the “art indirectly suggests such a
manipulation” (id., page 7). The examiner finds that Belder would have provided the suggestion and
motivation to manipulate the amount of isophthalic acid and other dicarboxylic acid to obtain a good
balance of weathering and mechanical properties (id., page 5) and concludes that”[i]n the case of . . .
De Jongh, one [of ordinary skill in the art] would lower the amount of isophthalic acid to improve the
mechanical properties, of the polyester but still retain weathering properties” (id., page 6). Appellants
submit, inter alia, that Belder discloses that the polyester resin must contain “at least 15 mol % of
isophthalic acid” as seen from the reference abstract and col. 1, lines 59-60, and teaches that the use of
higher amounts of isophthalic acid is preferred, and thus, in the absence of their invention, one of
ordinary skill in the art “would not have lowered the concentration of isophthalic acid below 15 mol %
in view of the disclosure of Belder” (brief, page 9, emphasis in original deleted; see also reply brief,
pages 3-6).
Upon carefully considering the record, we must agree with appellants. We find that while De
Jongh does not limit the amount of isophthalic acid in the polyester resin in generically disclosing the use
of a choline compound in powder coating compositions containing an epoxide cross-linking agent, one
of ordinary skill in this art would have found in Belder the teaching that the amount of this acid should
not be lower than 15 mol % in consideration of the properties of the coating, including weathering and
mechanical strength. We fail to find in the record any explanation by the examiner why one of ordinary
6 The references relied on by the examiner are listed at page 3 of the answer.
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