Appeal No. 2003-0754
Application No. 09/553,630
On page 2 of the Brief, appellants state that the claims
stand or fall together. We therefore consider claim 16 in this
appeal. 37 CFR § 1.192(c)(7) and (8)(2000).
For the reasons set forth below, we reverse each of the
rejections.
As a preliminary matter, we note that on pages 3-4 of the
Brief, appellants argue that this appeal should be decided as a
matter of law in favor of appellants. Appellants state that the
present application is a divisional application with claims
drawn only to a coated article. Appellants state that the clear
aqueous cathodic electrocoating composition has already been
deemed patentable by the Patent Office in U.S. Patent No.
6,123,866. Appellants argue that because the composition claims
have been deemed patentable, the product made from the
composition should be also deemed patentable (as a combination).
In response, the examiner states that he is not bound by
the opinions of a different examiner regarding patentability of
the composition claims. (Answer, page 5).
We note that patent disclosures are often very complicated
and different examiners with different technical backgrounds and
levels of understanding may often differ when interpreting such
documents. In re Dayco v. Total Containment Inc., 329 F.3d
1358, 1365-66, 66 USPQ2d 1801, 1808 (Fed. Cir. 2003). As such,
an examiner is not bound to follow another examiner’s
interpretation. Also, compare In re McDaniel, 293 F.3d 1379,
1383-84, 63 USPQ2d 1462, 1467-86 (CAFC 2002), wherein the Court
stated that it is well settled that the prosecution of one
patent application does not affect the prosecution of an
unrelated application. See also In re Wertheim, 541 F.2d 257,
264, 191 USPQ 90, 97 (CCPA 1976). (“It is immaterial in ex
parte prosecution whether the same or similar claims have been
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