Appeal No. 2004-1131
Application 09/562,632
specification, it merely reflects the intended use of the composition and adds no additional
limitation(s) to the specified ingredients therein. See generally, Corning Glass Works v.
Sumitomo Elect. U.S.A., Inc., 868 F.2d 1251, 1257, 9 USPQ2d 1962, 1966 (Fed. Cir. 1989); In
re Stencel, 828 F.2d 751, 754-55, 4 USPQ2d 1071, 1073 (Fed. Cir. 1987); In re Tuominen, 671
F.2d 1359, 213 USPQ 89 (CCPA 1982). Thus, we interpret appealed claim 1 to encompass
compositions containing at least the three specified components as of the time the components
are mixed together. See Exxon Chem. Pat., 64 F.3d at 1556-58, 35 USPQ2d at 1803-05
(“Consequently, as properly interpreted, Exxon’s claims are to a composition that contains the
specified ingredients at any time from the moment at which the ingredients are mixed together.”).
We have carefully reviewed the record on this appeal and based thereon find ourselves in
agreement with the supported position advanced by the examiner (answer, pages 3-4) that, prima
facie, one of ordinary skill in this art would have found in the combined teachings of Kubitza,
Tsuno and Hatano the reasonable suggestion that the composition comprising an aqueous,
hydroxy-functional, acid-group containing resin dispersion and a polyisocyanate of Kubitza can
be modified by the addition of an epoxy group and alkoxy group containing silane coupling agent
with the reasonable expectation of obtaining a coating composition with good adhesion to metal
surfaces.
Accordingly, since a prima facie case of obviousness has been established over the
combined teachings of Kubitza, Tsuno and Hatano by the examiner, we have again evaluated all
of the evidence of obviousness and nonobviousness based on the record as a whole, giving due
consideration to the weight of appellants’ arguments in the brief. See generally, In re Johnson,
747 F.2d 1456, 1460, 223 USPQ 1260, 1263 (Fed. Cir. 1984); In re Piasecki, 745 F.2d 1468,
1472, 223 USPQ 785, 788 (Fed. Cir. 1984).
As recognized by the examiner (answer, pages 4-5), appellants do not dispute that the
specified ingredients of the claimed compositions encompassed by appealed claim 1 as we
interpreted it above, are found in Kubitza, Tsuno and Hatano as stated by the examiner. Instead,
the issue framed by appellants is whether one of ordinary skill in this art would have combined
the references so as to arrive at the claimed compositions.
- 4 -
Page: Previous 1 2 3 4 5 6 7 8 9 10 11 12 Next
Last modified: November 3, 2007