Appeal No. 2006-0483
Application 09/860,272
The examiner has indicated that claims 16, 17, 23 and 24 are allowable over the applied
prior art. We find that the principal difference between these claims and appealed claim 1 is the
monomers specified therein. We find that the specified monomers of these claims are include
within the teachings of monomers in Mercurio, Nguyen and Sekiya. Accordingly, prima facie,
one of ordinary skill in the art routinely following the teachings of these references would have
reasonably arrived at the claimed coating compositions encompassed by these claims on the
same basis that the examiner set forth in the grounds of rejection that we affirmed above. See
Merck & Co., Inc. v. Biocraft Labs., Inc., 874 F.2d 804, 807, 10 USPQ2d 1843, 1845-46 (Fed.
Cir. 1989) (“That the ‘813 patent discloses a multitude of effective combinations does not render
any particular formulation less obvious. This is especially true because the claimed composition
is used for the identical purpose.”); In re Susi, 440 F.2d 442, 445, 169 USPQ 423, 425 (CCPA
1971) (“As appellant points out, Lauerer’s disclosure is huge, but it undeniably includes at least
some of the compounds recited in appellant’s generic claims and is of a class of chemicals to be
used for the same purpose as appellant’s additives.”); In re Lemin, 332 F.2d 839, 841, 141 USPQ
814, 815-16 (CCPA 1964)(“Generally speaking there is nothing unobvious in choosing ‘some’
among ‘many’ indiscriminately.”).
Furthermore, we find that, prima facie, Kuwajima (e.g., cols. 3-11 and Examples 1,
13 and 14) and Kumacheva (e.g., [0016], [0017], [0028] through [0034] and Example 1, [0090]
through [0092]), would have disclosed to one of ordinary skill in this art coating compositions
falling within the appealed claims 1 through 4, 7 through 19, 23 through 25 and 27 through 31.
We decline to exercise our authority under 37 CFR § 41.50(b) (2005) with respect to
these matters, leaving it to the examiner to apply the references to the claims upon any further
prosecution of the appealed claims before the examiner upon the disposition of this appeal.
No time period for taking any subsequent action in connection with this appeal may be
extended under 37 CFR § 1.136(a)(1)(iv) (2005).
AFFIRMED-IN-PART
REMANDED
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