Appeal No. 2003-0891
Application 09/011,614
of the “stain test” would be masked with false positives or negatives by other ingredients, such as
pigments that can stain the silicone paper or dispersion aids or tackifiers that when dry, can stain
in and of themselves or prevent staining of the silicon paper by the pigment or the fatty
compound.
Thus, on this record, appellants’ unsupported arguments and conclusions based on the
“stain test” limitation and the manner in which the aqueous dispersions of Imagawa that would
otherwise fall within the appealed claims, function in coating an impervious writing surface, are
entitled to little, if any, weight. See In re Payne, 606 F.2d 303, 315, 203 USPQ 245, 256 (CCPA
1979); In re Lindner, 457 F.2d 506, 508, 173 USPQ 356, 358 (CCPA 1972). Indeed, appellants
have not provided effective argument or objective evidence which reliably establishes that
compositions of Imagawa that otherwise fall within the appealed claims would in fact provide a
stain when subjected to the “stain test” set forth in appealed claim 11. To the contrary,
appellants’ contentions do not take into account the clear disclosure in Imagawa that the amount
of the fatty compound is to be controlled to prevent staining of the impervious writing surface,
which teaching we pointed out above. Thus, the reference teaches that amounts of the fatty
compounds that cause staining of the impervious writing surface, which can include silicone
paper that is encompassed by appealed claim 29, is to be avoided.
Second, while it is true that, as appellants contend, the Imagawa Examples disclose
compositions that fall outside of the appealed claims because of the ratio of styrene compound to
fatty compound, consideration of the reference is not limited to such disclosure. See generally,
Merck v. Biocraft, 874 F.2d at 807, 10 USPQ2d at 1846, quoting In re Lamberti, 545 F.2d 747,
750, 192 USPQ 278, 280 (CCPA 1976) (“But in a section 103 inquiry, ‘the fact that a specific
[embodiment] is taught to be preferred is not controlling, since all disclosures of the prior art,
including unpreferred embodiments, must be considered.’”). And, third, we find no effective
argument or objective evidence in the record which reliably establishes that the aqueous
dispersions of Imagawa would not provide “a long term coating since bond strength” because of
the “bond strength” of the erasable composition. Indeed, appealed claims 11 and 20 require only
that the composition can be applied as a coating to any extent, there being no claim limitation
with respect to bond strength or the term of the coating because there is no identified facet of the
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