Appeal No. 2003-0891
Application 09/011,614
Thus, appealed independent claim 11 encompasses myriads of aqueous dispersions that
contain varying amounts of one or more styrene compounds and fatty compounds within the
specified ratio. Among the other claims considered here, appealed dependent claim 12 specifies
that the homopolymer or copolymer of styrene contains at least 30% by weight of styrene or
methyl styrene. Appealed dependent claim 20 is drawn to a process of bonding coating or
sealing by applying a coating of the aqueous dispersion of claim 11 to a substrate, with the only
other specified process step pertaining to “when the substrate is to be bonded.” Appealed claim
21 dependent on claim 20, contains the same limitation set forth in appealed dependent claim 12.
Appealed dependent claim 29, dependent on claim 20, specifies substrates, a number of which
encompass impervious surfaces.3
Turning now to the grounds of rejection based on Imagawa, we first consider the ground
of rejection under § 103(a) which is a separate consideration from the issue of anticipation. See
In re Spada, 911 F.2d 705, 707 n.3, 15 USPQ2d 1655, 1657 n.3 (Fed. Cir. 1990). We have
carefully reviewed the record on this appeal and based thereon find ourselves in agreement with
the examiner that the claimed aqueous dispersions encompassed by appealed claims 11 and 14
through 20 and 22 through 29 would have been obvious over the teachings of Imagawa to one of
ordinary skill in this art at the time the claimed invention was made.
As pointed out by the examiner, one of ordinary skill in this art following the teachings in
Imagawa with respect to a water base erasable ink composition for impervious surfaces, and thus
a coating composition, would find the same water, pigment, fatty compound and styrene
compound, and other ingredients specified in the appealed claims, including dispersion aids, in
3 Any further prosecution of the appealed claims before the examiner should include
consideration of whether appealed claim 22 constitutes a substantial duplicate of appealed claim
20 because the recitation of the “fatty compound” appears to be the same as in appealed claim 1
on which claim 20 depends. In the event that these claims are held to be allowable, see Manual
of Patent Examining Procedure § 706.03(K) Duplicate Claims (8th ed., Rev. 1, Feb. 2003). Also,
consideration should be given to the issue of whether appealed claim 24 complies with 35 U.S.C.
§ 112, second paragraph, because appealed claim 11 on which this claim ultimately depends
specifies that the fatty compound has at least 13 carbon atoms and thus any such compound
would have a molecular weight of at least 156, and not a lower molecular weight as permitted by
the range in claim 24.
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