Appeal No. 2000-2123
Application No. 09/029,637
states (Answer, pages 3 and 4) that:
The appellants argue that because the reference
excludes solvent, it wouldn’t be obvious to include
solvent. Solvents are well known in coatings, even to
those not skilled in the art. One of ordinary households
frequently add solvents, which can be bought at hardware
and paint stores, to coatings and paints to reduce the
viscosity in order to spray a coating rather than
applying it with a brush, or to reduce the viscosity of
coatings when the temperature is low. Many inventors have
developed formulations that don’t require solvents in
order to meet regulations pertaining to volatiles that
harm air quality. The invention of the claims takes a
step back in the art. [Emphasis added.]
The examiner’s own statement, however, does not demonstrate
that one of ordinary skill in the art would not be taught away
from employing solvent in the solvent-free system described in
Noury. See In re Gurley, 27 F.3d 551, 553, 31 USPQ2d 1130,
1131 (Fed. Cir. 1994) (“A reference may be said to teach away
when a person of ordinary skill, upon reading the reference,
would be discouraged from following the path set out in the
reference, or would be led in a direction divergent from the
path that was taken by the applicant.”) To add the solvent to
the solvent-free system as proposed by the examiner would be
to destroy the invention on which Noury is based. Ex parte
Hartmann, 186 USPQ 366, 367 (Bd. App. 1974).
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