Appeal No. 2007-1487
Application 09/562,632
this person would have recognized that this component would be
incompatible with an aqueous composition.
Furthermore, one of ordinary skill in this art would have reasonably
expected from Morikawa that the addition of an epoxy functional silane
component to Kubitza’s composition would improve workability, bond
strength, and adhesion of two-part polyurethane coating compositions, and
indeed, both Kubitza and Morikawa teach that such two-part compositions
can be applied to the same materials, including metal surfaces, in the same
manner, including, inter alia, wet and solventless processing. Thus, on this
record, this person routinely following the combined teachings of the
references would have reasonably arrived at the claimed aqueous coating
composition encompassed by claims 1 and 8 by following the method of
preparation disclosed by Kubitza without recourse to Appellants’
specification. See In re Corkill, 771 F.2d 1496, 1497-1500, 226 USPQ
1005, 1006-08 (Fed. Cir. 1985); In re Skoll, 523 F.2d 1392, 1397-98,
187 USPQ 481, 484-85 (CCPA 1975); In re Castner, 518 F.2d 1234,
1238-39, 186 USPQ 213, 217 (CCPA 1975); In re Lintner, 458 F.2d 1013,
1015-16, 173 USPQ 560, 562-63 (CCPA 1972); see also In re Vaeck, 947
F.2d 488, 493, 20 USPQ2d 1438, 1442 (Fed. Cir. 1991) (“Both the
suggestion and the reasonable expectation of success must be founded in the
prior art, not in the applicant’s disclosure.”); In re O’Farrell, 853 F.2d 894,
903-04, 7 USPQ2d 1673, 1680-81 (Fed. Cir. 1988) (“For obviousness under
§ 103, all that is required is a reasonable expectation of success.” (Citations
omitted)); In re Keller, 642 F.2d 413, 425, 208 USPQ 871, 881 (CCPA
1981) (“The test for obviousness is not whether the features of a secondary
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