Ex Parte VANDEVOORDE et al - Page 2




                       Appeal No. 2004-2275                                                                                                                 
                       Application No. 09/444,968                                                                                                           


                                                                   CITED PRIOR ART                                                                          
                                 As evidence of unpatentability, the Examiner relies on the following                                                       
                       reference:                                                                                                                           
                       Ho                                                      5,798,409                            Aug. 25, 1998                           
                       Mayer et al. (Mayer)                       6,309,707                            Oct. 30, 2001                                        
                                 The Examiner rejected claims 1, 2, 4, 5 and 12 under 35 U.S.C.                                                             
                       § 102(e) as anticipated by Ho; claims 1 to 3, 5 and 12 under 35 U.S.C.                                                               
                       § 102(e) as anticipated by Mayer; and claim 3 under 35 U.S.C. § 103(a)                                                               
                       as unpatentable over Ho. (Answer pp. 4 to 6).                                                                                        
                             Appellants’ invention relates to a coating composition comprising a                                                            
                       hydroxy group-containing film forming polymer having a hydroxy value                                                                 
                       between 75 and 300 mg KOH/g solid resin, a polyisocyanate compound,                                                                  
                       and a diol.  According to Appellants, the claimed invention exhibits good                                                            
                       thinnability, low VOC, good mixing properties and low application                                                                    
                       viscosities.  (Specification, p. 3).  Claim 1, which is representative of the                                                        
                       claimed invention, appears below:                                                                                                    
                                 1.  A coating composition comprising a hydroxy                                                                             
                                 group-containing film forming polymer with a hydroxy value                                                                 
                                 between 75 and 300 mg KOH/g solid resin, a polyisocyanate                                                                  
                                 compound, and a diol of the general formula                                                                                

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