Appeal No. 2003-1830
Application 09/534,101
this art would have led that person to the claimed invention as a whole, including each and every
limitation of the claims arranged as required by the claims, without recourse to the teachings in
appellants’ disclosure. See generally, In re Rouffet, 149 F.3d 1350, 1358, 47 USPQ2d 1453,
1458 (Fed. Cir. 1998); Pro-Mold and Tool Co. v. Great Lakes Plastics, Inc., 75 F.3d 1568, 1573,
37 USPQ2d 1626, 1629-30 (Fed. Cir. 1996); In re Fine, 837 F.2d 1071, 1074-76, 5 USPQ2d
1596, 1598-1600 (Fed. Cir. 1988); In re Dow Chem. Co., 837 F.2d 469, 473, 5 USPQ2d 1529,
1531-32 (Fed. Cir. 1988).
Appellant divides the appealed claims into two groups on the basis of separate issues
(brief, pages 4-5). The issue with respect to representative appealed claim 1 of the first group,
involves the claim limitation “a zone adjacent the exposed surface [of the top coat layer of
ultraviolet-curable colloidal silica containing synthetic resin] where the concentration of the
colloidal silica is greater than in the rest of the top coat.” The issue with respect to appealed
claim 19, the sole claim in the second group, involves the claim limitations “[a]n article of
manufacturing comprising a body having a metallic surface, [and] a base coat layer of synthetic
resin . . . bonded to the metallic surface.” We decide this appeal based on appealed claims 1 and
19. 37 CFR § 1.192(c)(7) (2002).
In the statement of the ground of rejection, the examiner admits that Kidai fails to
disclose, inter alia, “(1) substrate such as metal; [and] (2) concentration of the colloidal silica is
greater in a zone adjacent to the exposed surface than in the rest of the top hard coat;” finds that
the hardcoat layer disclosed by Medford has the same concentration of colloidal silica since it is
curable by ultraviolet light as is the topcoat of the claimed coating; and concludes that it would
have been obvious to one of ordinary skill “to replace [Kidai’s] heat curable top hard coat with
[Medford’s] [ultraviolet] curable hard coating” (answer, pages 3-4).
With respect to the issue of the claim limitation in appealed claim 1, appellant argues in
the brief that the examiner improperly “assumes that the zone of increased concentration of
colloidal silica is present in the prior art, even though that prior art does not disclose it, and the
appellant is challenged to prove that something undisclosed is not present,” and that Medford
“does not disclose the distribution of colloidal silica in the finished coating” as required by this
claim (page 4). Thus, appellant submits that the claimed top coat layer and the coating of
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