Appeal No. 2001-0233
Application 08/668,640
As we find the second contention persuasive, we reverse. Claim 1 requires the
particulate material to have a mean particle size or mean diameter of less than about 10
microns. (Claim 1, lines 8-10). The Examiner has admitted that Nishihara does not
disclose a particle size, but states “however, the filler’s thickness would not be expected
to exceed that of the resin. Since a paint so formulated can be coated on in multiple
coating steps and the thickness may be on the order of 30 microns (Example 4 in
column 5), it is plausible to presume that the filler particles may have particle size
dimensions on the order of 1/3 that thickness for the purpose of a smooth finish.”
(Examiner’s Answer, page 9, line 16, page 10, line 2).
We disagree with the Examiner’s interpretation of this reference. Example 4
(Nishihara, column 5, line 55 et seq.) teaches a single-step coating which coating
reaches a thickness of 30 microns. It says nothing about surface smoothness, particle
sizes, or the number of coats to apply. We, therefore, do not read Example 4 as
suggesting or teaching a particle size of 10 microns. Consequently, we reverse this
rejection.
Rebuttal Evidence
While the arguments presented do not expressly term the evidence of record as
“rebuttal” evidence, we will nonetheless review this evidence as both rebuttal evidence,
and evidence put forth to show the criticality of the claimed ranges.
The Appellants, throughout their Briefs, argue that the mean diameter of the
particle size is critical (see, e.g., Appeal Brief, page 6, lines 1 et seq.). The Appellants
assert, by pointing to data within commonly owned U.S. Patent No. 5,902,759 (‘759
patent), and data contained within the instant specification, that they have demonstrated
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