Appeal 2006-1080
Application 10/109,343
to the reason the skilled artisan, with no knowledge of the claimed invention,
would have selected these components for combination in the manner
claimed”).
In my view the Examiner has failed to explain the motivation,
suggestion or teaching in the applied prior art that would have led one of
ordinary skill in the art to use a pitch that is a brittle, glassy, non-asphaltic
solid at ambient temperature and apply it to a porous board or fibrous
material under conditions that result in a non-tacky coating which penetrates
into the board such that the coating will not shatter when fastening means
are driven into the board. The Examiner found that the coal tar pitch of
Jackson meets the recited claim limitations because the prior art shows that
coal tar pitch is known to have the following features:
1. brittle (Lamport, col. 1, ll. 67+)
2. glassy (Rothbuhr, col. 9, ll. 39 & 40)
3. relatively high penetration value when applied to most porous
substrates (Rajalingam, col. 1, ll. 35-48), and
4. softening point of 109.4°C (230°F), a density of 1.336g/cc, and an
ash content of 0.17wt% (Wombles, Table 11, 4).
Answer 4 & 6-7.
Notably, the Examiner must rely on several references because the features
of coal tar pitch vary. Indeed, Jackson indicates that bituminous
compositions having a permanently tacky surface on drying are suitable for
use in the invention (See, e.g., Jackson, p. 2, ll. 33-37). According to
Jackson, such compositions may be formulated “by including in the
composition bitumens having a low penetration value” (Jackson, p. 2,
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