Appeal No. 1998-3205
Application No. 08/272,438
THE REJECTIONS
Claims 6-10 stand rejected under 35 U.S.C. § 102(a) or (b) as anticipated by
or, in the alternative, under 35 U.S.C. § 103 as unpatentable over Bors, Smith or
Bernard.1
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 6. 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 -35ēC to about +25ēC.”
1 As the case is briefed before us, the prior art references have been relied on
under 35 U.S.C. § 102(a) or (b). Smith constitutes prior art under 35 U.S.C.
§ 102(b). Bernard and Bors do not appear to constitute prior art within the meaning
of 35 U.S.C. § 102(a) or 35 U.S.C. § 102 (b). However, these references do
appear to constitute prior art under 35 U.S.C. § 102(e). Appellants have not
disputed the examiner’s position that all of the references are prior art to appellants’
invention.
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