Appeal No. 2003-1830
Application 09/534,101
absence of heating step the ultraviolet curable coating composition of [Medford] results in the
coating having colloidal silica concentration [the] same through out the top coat” (id., page 5).
In the reply brief, appellant again points out that it is disclosed in the specification as
quoted above, that the step of heating the top coat prior to the ultraviolet curing step is thought to
be responsible for the claimed zone of greater concentration of colloidal silica in the top coat and
that such a step is not disclosed by Medford (pages 1-2), and that Kidai does not disclose a base
coat bonded to a metallic surface (pages 3-4).
We find that the examiner has not specifically addressed the issue of whether the
combined teachings of Kidai and Medford would have suggested the application of the base coat
of Kidai to a metal substrate as required by appealed claim 19 to one of ordinary skill in the art,
and we find no basis on this record to subsume this issue into the unrelated issue on the entirely
different limitation of appealed claim 1 as the examiner has done. Accordingly, because the
examiner has not established a prima facie case of obviousness with respect to appealed claim 19
on this record, we reverse the ground of rejection with respect to this claim.
Turning now to the issue of the zone of greater concentration of colloidal silica in the top
coat in appealed claim 1, on this record, we agree with appellant that it is clear from the
specification that the zone is created when the combination of uncured top coat composition and
resin base coat is heated prior to curing the top coat with ultraviolet light in order to bond the two
layers, and that there is no disclosure of such a step or zone in Medford. In order to establish a
prima facie case of obviousness of the claimed product characterized by the presence of such
zone encompassed by appealed claim 1, the examiner must establish that the claimed product
including the zone limitation reasonably appears to be identical or substantially identical to the
product of the combined teachings of Kidai and Medford even though prepared by a different
process. Cf. In re Spada, 911 F.2d 705, 708-09, 15 USPQ2d 1655, 1657-58 (Fed. Cir. 1990)
(“The Board held that the compositions claimed by Spada ‘appear to be identical’ to those
described by Smith. While Spada criticizes the usage of the word ‘appear’, we think that it was
reasonable for the PTO to infer that the polymerization by both Smith and Spada of identical
monomers, employing the same or similar polymerization techniques, would produce polymers
having the identical composition.”); In re Best, 562 F.2d 1252, 1254-55, 195 USPQ 430, 432-33
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