Appeal No. 2006-0483
Application 09/860,272
homopolymers of different Tg in the claimed range (answer, pages 6-7). The examiner further
submits that the step of heating the coating composition to obtain fused particles in Mercurio
‘795 is not the same as “dried” as recited in claim 1, pointing out that the disclosure “in drying;
i.e., there must be essentially particle-to-particle contact,” at col. 6, ll. 47-50, meets the claim
limitation (id., page 7). In the reply brief, appellants acknowledge that Mercurio ‘795 discloses a
process in which the coated “dispersion of particles” dries “so that the particles pack uniformly
and do not coalesce to continuous film” after which the particles are heated and “fuse to one
another to form a continuous film” (page 4). Appellants submit that the “uncoalesced film is an
intermediate step” which is not a useful final product (id., pages 4-5).
We agree with the examiner’s position. We find that one of ordinary skill in this art
routinely following the teachings of Mercurio ‘795 would have arrived at particles prepared from
at least two monomers each having a different associated Tg within the range specified in claim
1, and thus, at least some of the particles would reasonable appear to exhibit phase segregation
(e.g., col. 6, ll. 14-31, col. 7, l. 44, to col. 8, l. 49, col. 14, l. 63, to col. 15, l. 3, and the
Examples). In an applied coating prepared from a dispersion of particles so produced, the
particles pack uniformly when “wet and in drying” in air in contrast to “a mudcracked coating,”
in a manner analogous to “a bed or layer of stacked marbles,” thus disclosing a geometrically
ordered array as required by claim 1 (e.g., col. 6, l. 47, to col. 7, l. 9, and col. 16, ll. 16-18).
Appellants’ principal argument is that the coating compositions of Mercurio ‘795 exhibit
the properties specified in claim 1 as we have interpreted this claim above, but in use result in
the intermediate air dried product that exists prior to heating the dried coating to fuse the
particles to form a film. This argument at once acknowledges that Mercurio ‘795 teaches the
existence of the claimed coating composition which is all that is required to support the grounds
of rejection, even if that coating composition is used to provide an intermediate coating that is
further processed as taught by the reference. See Exxon Chem. Pats., Inc. v. Lubrizol Corp., 64
F.3d 1553, 1555-58, 35 USPQ2d 1801, 1802-05 (Fed. Cir. 1995) (“The specification as a whole,
and the claims in particular, contain no temporal limitation to the term ‘composition.’ . . . The
6 In the grounds of rejection involving Mercurio ‘795 or ‘086, the examiner focuses only on
‘795 (answer, page 5; see above note 2). A discussion of Mercurio ‘086 is not necessary to our
decision. See In re Kronig, 539 F.2d 1300, 1302-04, 190 USPQ 425, 426-28 (CCPA 1976).
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