Appeal No. 2001-0774
Application 09/087,521
contention as a matter of fact. See generally, In re Ahlert, 424 F.2d 1088, 1091-92, 165 USPQ
418, 420-21 (CCPA 1970). However, appellants do submit that the references fail to teach any
conveyor operative within both a new powder feeder and a powder reclaim feeder to transfer
powder into the coating structure” (brief, page 19; evidence in original).
We agree with appellants that the examiner has not established some reason to combine
the elements shown in the references to arrive at the claimed apparatus (id., pages 18-19) because
we fail to find in the description of the prior art apparatus acknowledged by English any
inference that vacuum can be used to convey powder through conduit 24 of Kock (see answer,
pages 14-15 and 20-21), and we fail to find in the examiner’s explanation of the recycle systems
used in Kock and of the Eastman apparatus (id., pages 15 and 22) any reason to combine the
apparatus elements in such manner as to arrive at the apparatus elements required for the
“conveyor” in appealed claim 25. Thus, we reverse the grounds of rejection of appealed claims
25 through 27.
Other Issues
We suggest that the examiner consider the following upon any further prosecution of the
appealed claims subsequent to the termination of this appeal.
We decline to exercise our authority under 37 CFR § 1.196(b) (2002) and enter on the
record a new ground or grounds of rejection of at least appealed claim 1 under 35 U.S.C.
§ 103(a) as being unpatentable over the “typical” prior art electrostatic fluidized bed powder
coating apparatus acknowledged as prior art by appellants in the specification6 (pages 3-4; see
above note 4) combined with Heckman to show that one of ordinary skill in the art would have
recognized that powder can be collected via a cyclone instead of a pulsable filter, and Gibson to
6 Cf. In re Nomiya, 509 F.2d 566, 570-71, 571 n.5, 184 USPQ 607, 611, 611 n.4 (CCPA 1975)
(“We see no reason why appellants’ representations in their application should not be accepted at
face value as admissions that Figs. 1 and 2 may be considered “prior art” for any purpose,
including use as evidence of obviousness under § 103. [Citations omitted.] By filing an
application containing Figs. 1 and 2, labeled prior art, ipsissimis verbis, and statements
explanatory thereof, appellants have conceded what is to be considered as prior art in
determining obviousness of their improvement.”).
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