Appeal 2007-0906
Application 10/445,238
Examiner clearly referenced claims 1-6 of Clarke in stating the rejection
(Answer 2, 5). 4
In this regard and as readily ascertainable by a reading of claim 1 of
Clarke, it is unmistakable that this claim clearly recites a method
corresponding to the method of separately argued representative claims 1
and 4. Claim 1 recites a method for coating a composite structure surface
with a thermoplastic LCP coating including the steps of: (c) applying a LCP
thermoplastic layer onto a tool [surface]; (e) applying a composite material
onto the LCP layer; (f) curing the structure [LCP and composite layers]; and
(g) removing the structure [layers] from the tool.5 Similarly, claim 6, steps
(c), (d), (f), and (g) of Clarke correspondingly recites substantially similar
method steps in a method for applying a coating to a composite.
Appellants’ representative claims 1 and 4 differ from the claims 1 and
6 primarily in requiring that the LCP is multi-axially oriented and in the
specified curing temperature ranges required by claims 1 and 4, respectively.
4 Notwithstanding our disposition of the obviousness-type double patenting
rejection presented for the first time in the Answer, we are somewhat
disheartened by the presentation of this rejection not only for the numerous
uncalled for references to the Patent Specification of Clarke rather than the
claims of Clarke but also because of the lack of any clear necessity in
introducing such an additional rejection over the claims of Clarke, when
Clarke itself was available in its’ entirety as a § 102(b) reference as
employed in the § 103(a) rejection presented. In other words, the
obviousness-type double patenting rejection would have had no chance of
being affirmed if the 103(a) rejection were not affirmable. Under such
circumstances, there is no point in presenting the obviousness-type double
patenting rejection as another basis of rejection.
5 We note that separately argued appealed claims 1, 4, and 6 employ open
“comprising” transitional language in reciting the method steps leaving the
appealed claims open to the use of other materials and method steps.
11
Page: Previous 1 2 3 4 5 6 7 8 9 10 11 12 13 14 Next
Last modified: September 9, 2013