Appeal 2007-0296
Application 09/873,714
agree with Appellants, however, that Richard teaches using phosphoric acid
esters to improve adhesion between vinyl resin layers (col. 1, ll. 6-9; col. 2,
ll. 54-61) and not to a metal substrate as in claim 1 and Maag. While the
disclosure at lines 55-60 in column 1 of Richard refers to providing strong
adhesive bonds to metal substrates, we share the Appellants' view that this
disclosure must be interpreted as relating to prior art compositions for the
reasons fully detailed by Appellants (Br. 11-12; Reply Br. 4-5).
In the rejection of claim 1, the Examiner also concludes that Maag's
disclosure of (meth)acrylic acid esters as a monounsaturated reactive diluent
(col. 3, ll. 13-20) would have suggested the specific ester product formed by
reacting (meth)acrylic acid with cycloaliphatic alcohol as claimed by
Appellants. We disagree. Maag's non-categorical genus is evidentially
inadequate to support this conclusion.2
This evidential inadequacy is not supplied by Brehm which is relied
on for suggesting the specific cycloaliphatic-derived ester of claim 8,
namely, isobornyl (meth)acrylate. While such an ester is used as a
monofunctional reactive thinner in the composition of Brehm, this
composition is for coating thermoplastic materials (col. 6, ll. 33-35) at
thicknesses which must not exceed 50 microns in order to avoid cracking
2 In an attempt to further support this conclusion of obviousness, the
Examiner refers to a non-applied reference (i.e., US 6,340,733 to Stark
et al.) in the "Response to Argument" section of the Answer (Answer 7).
It is well established that such reliance on a non-applied reference is wholly
improper. In re Hock, 428 F.2d 1341, 1342 n.3, 166 USPQ 406, 407 n.3;
Manuel of Patenting Examining Procedure (MPEP) § 706.02(j)(Rev. 5, Aug.
2006). Therefore, we have not considered this reference in our disposition
of this appeal.
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