Appeal No. 1998-3154
Application No. 08/277,937
Concerning the examiner's three rejections under
35 U.S.C. § 103, we essentially agree with the position
espoused by appellants. The examiner has not established the
requisite motivation which establishes why one of ordinary
skill in the art would have modified the base composition of
Benefiel or Backhouse by incorporating a non-volatile
aliphatic polyether therein, and our review of the applied
references finds no such motivation. As emphasized by
appellants, Benefiel exclusively discloses the use of volatile
solvents in the base composition for the purpose of
facilitating "the most rapid removal" of the solvents
(column 1, line 68). The same can be said for the Backhouse
disclosure. At most, the examiner has indicated why one of
ordinary skill in the art might consider, or try, to add a
non-volatile aliphatic polyether into the base compositions of
Benefiel and Backhouse. However, such is not the proper
standard for determining obviousness under § 103.
As for the § 112, second paragraph, rejection, we agree
with appellants that one of ordinary skill in the art would
understand that the criticized claim language defines a
metallic appearance for the multicoat finish that is equal to
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