Appeal No. 2006-0483
Application 09/860,272
Appellants argue the claims in each ground of rejection as a group in the brief. Thus, we
decide this appeal based on appealed claim 1 as representative of the grounds of rejection and
appellants’ groupings of claims. 37 CFR § 41.37(c)(1)(vii) (September 2004).
We affirm the grounds of rejection under § 102(b) and § 103(a) and reverse the ground of
rejection under § 112, second paragraph. Therefore, the examiner’s decision is affirmed-in-part.
We refer to the answer and to the brief for a complete exposition of the positions
advanced by the examiner and appellants.
Opinion
Our review of the issues in this appeal begins with the interpretation of claim 1. We give
the terms of this claim the broadest reasonable interpretation in their ordinary usage in context as
they would be understood by one of ordinary skill in the art in light of the written description in
the specification unless another meaning is intended by appellants as established therein, and
without reading into the claim any disclosed limitation or particular embodiment. See, e.g., In re
Am. Acad. of Sci. Tech. Ctr., 367 F.3d 1359, 1364, 70 USPQ2d 1827, 1830 (Fed. Cir. 2004);
In re Morris, 127 F.3d 1048, 1054-55, 44 USPQ2d 1023, 1027 (Fed. Cir. 1997); In re Zletz,
893 F.2d 319, 321-22, 13 USPQ2d 1320, 1322 (Fed. Cir. 1989).
The claimed coating composition comprises at least any amount, however small, of a
dispersion of particles, wherein the particles comprise at least any amount, however small, of
“polymers produced from monomers having different glass transition temperatures, the
difference in glass transition temperatures ranging from 50 to 260°C.” We determine that one of
ordinary skill in this art would have known at the time the application was filed that it is not a
“monomer” that has a “glass transition temperature” but a polymer prepared therewith.4 The
glass transition temperature (Tg) of a homopolymer prepared with a monomer is measured. The
measured Tg associated with each monomer used to prepare a copolymer is used in known
under certain circumstances. Thus, we determine that the inclusion of claim 17 in this ground of
rejection constitutes harmless error.
4 See, e.g., Barbara J. Furches (Furches), “Plastics Testing,” 19 Kirk-Othmer Encyclopedia of
Chemical Technology 322-23 (4th ed., New York, John Wiley & Sons. 1996) (copy attached);
Hawley’s Condensed Chemical Dictionary 536 (14th ed., Richard J. Lewis, Sr., revisor, New
York, John Wiley & Sons, Inc., 2001) (copy not provided).
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