Appeal No. 2000-0346
Application No. 08/868,353
In response, appellant argues that claim 32 “is clearly directed to a film laminating
adhesive composition where the components of the adhesive composition of claim 21 are
selected for their suitability in the specified method for preparing bonded laminates” (brief,
page 4). This argument (which the examiner has not specifically rebutted) has merit.
When viewed with this argument in mind, claim 32 (and claim 33 which depends
therefrom) defines with adequate particularity, a film laminating adhesive composition
which contains the ingredients of claim 21 that are suitable for preparing bonded laminates
in accordance with the method steps recited in claim 32 (and correspond-ingly wherein the
substrate of this method is selected from the group listed in dependent claim 33).
Under these circumstances, we cannot sustain the section 112, second paragraph,
rejection of claims 32 and 33.
With respect to the alternative section 103 rejections, it is appropriate to reiterate
the appellant’s point that De Long’s composition is utilized as an anti-fouling overcoat for
watercraft structures whereas the compositions of Wierer or Druschke or Mirle are utilized
as adhering or binding agents. Particularly in light of these disparate utilities, there would
have been no suggestion, or a reasonable expectation of success, for combining the
applied reference teachings in the manner proposed by the examiner. See In re O' Farrell,
853 F.2d 894, 904, 7 USPQ2d 1673, 1680-1681 (Fed. Cir. 1988)
(obviousness under section 103 requires a suggestion for the proposed modification and
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