Appeal 2007-1223
Application 10/007,149
filler is the same as the claimed uncalcined alumina specified in claim 10 (Answer
5). The Appellants also have not refuted the Examiner’s assertion that it would
have been obvious to a person of ordinary skill in the art to utilize the composition
of Christie for coating substrates including metallic and polymeric, in multilayered
coatings, and coating in thickness specified by the claims (Answer 5-6).
The Appellants’ arguments regarding the median particle size of the abrasion
resistant additives are not persuasive (Br. 8-10). As indicated above, Christie
discloses the preferred particle sizes for the abrasion resistant additive to range
from 3-250 µm. As such, a person of ordinary skill in the art would have
reasonably expected that the additives having the median particle size of 5.5 µm or
slightly less than 3 µm would still possess abrasion resistant properties. Titanium
Metals Corp. of Am. v. Banner, 778 F.2d 775, 783, 227 USPQ 773, 779 (Fed. Cir.
1985) (holding that a prima facie case of obviousness exists even when the
claimed range and the prior art range do not overlap but are close enough such that
one skilled in the art would have expected them to have the same properties).
Consequently, we conclude that a prima facie case of obviousness has been
established.
The Examiner has combined the teachings of Hiroshima to the above
teachings of Christie reference in rejecting the subject matter of claims 41 and 59-
63. In response to this rejection, the Appellants argue that “the Hiroshima
reference does nothing to overcome the deficiencies of Christie in teaching or
suggesting the present invention” (Br. 16). Appellants’ arguments are not
persuasive for the reasons set forth above and in the Answer.
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