Appeal 2007-2910
Application 10/304,881
1 conventional. Intentional misuse of the improvements format is a serious
2 matter since the reader is misled about where the improvements actually lie.
3 For instance, those skilled in the art would have understood pigments to be
4 conventional constituents of paints.9 Claim 16 should be redrafted to reflect
5 only the actual improvements in the "improvement" portion of the claim
6 before any further examination occurs.
7 The improvements are listed using the transitional term "comprises",
8 where one limitation (the water-based paint composition) uses the
9 transitional term "comprising", both of which open the scope of the claim to
10 include elements not listed as limitations.10 The phrase "into said water-
11 based paint composition" is at best redundant since it modifies elements
12 already said to be part of what the water-based paint composition comprises.
13 In any case, the preposition "into" makes no sense since it implies a verb
14 (e.g., "mixed into") that does not exist rather than simply a state of being.
15 Note that the claim does not exclude the use of other coatings such as a top
16 coat over the water-based composition in the claim.
17 The water-based paint composition has "wet adhesion properties".
18 The specification defines11 "wet adhesion" to mean
19 the ability of a paint film to maintain good adhesion in the
20 presence of a high humidity environment or with water
21 immersion/washing.
22 The phrase "wet adhesion properties" is not defined, however, which begs
23 the question which properties of wet adhesion are limiting. For purposes of
9 Louie F. Sanguinetti, Paint Manufacture, p. 1297, in Applied Polymer
Science (R.W. Tess & G.W. Poehlein eds.) (2d ed. 1985) (APS article).
10 Genentech, Inc. v. Chiron Corp., 112 F.3d 495, 501, 42 USPQ2d 1608,
1613 (Fed. Cir. 1997).
11 Spec. ¶0001.
4
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