Appeal 2007-2133
Application 10/790,502
above, the Specification discloses a large number of additives for such
compositions, and we further find no disclosure in the Specification of any
ingredients that are identified as materially affecting the formation of a solid
crosslinked epoxy nitrile resin coating. See, e.g., In re Herz, 537 F.2d 549,
551-52, 190 USPQ 461, 463 (CCPA 1976) (“[I]t is necessary and proper to
determine whether [the] specification reasonably supports a construction”
that would exclude or include particular ingredients.); see also, e.g., PPG
Indus., Inc. v. Guardian Indus. Corp., 156 F.3d 1351, 1354-357,
48 USPQ2d 1351, 1353-356 (Fed. Cir. 1998) (Patentees “could have
defined the scope of the phrase ‘consisting essentially of’ for purposes of its
patent by making clear in its specification what it regarded as constituting a
material change in the basic and novel characteristics of the invention. The
question for our decision is whether PPG did so.”).
With respect to the second ground of rejection under § 103(a),
contrary to Appellants’ position (Br. 13-14; Reply Br. 8-9), we find
sufficient evidence in McGinniss establishing that one of ordinary skill in
this art would have modified Pellegri’s thermal curing process by using
infrared radiation thermal heating in place of convection heating disclosed in
the reference (Br. 13-14; Reply Br. 8-9). Indeed, we are of the opinion one
of ordinary skill in this art would have reasonably substituted one of these
equivalent forms of thermal heating epoxy resin compositions for another
with the reasonable expectation of the same or similar results even without
an express suggestion in McGinniss. See, e.g., In re Siebentritt,
372 F.2d 566, 567-68, 152 USPQ 618, 619 (CCPA 1967) (express
suggestion to interchange methods which achieve the same or similar results
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