Appeal 2007-2910
Application 10/304,881
1 property in an otherwise obvious combination does not overcome a prima
2 facie case of obviousness.45
3 In any case, the desirability of wet adhesion was known and would
4 have suggested the use of other ingredients such as cyclic alkylene ureas.
5 Claim 16 is open to the inclusion of wet adhesion additives in addition to the
6 listed ingredients. Those skilled in the art and concerned with wet adhesion
7 would have used a paint having wet adhesion additives when appropriate.
8 Indeed, routine experimentation testing additives would have revealed the
9 inherent wet adhesion properties of the Levine-Robeson combination since
10 the control sample (the Levine-Robeson combination without additives)
11 would have shown wet adhesion properties.
12 The teachings of the Levine and Robeson patents (along with the
13 context provided by the APS article) would have led those skilled in the art
14 to appreciate a water-based, pigmented second-coat using Robeson's
15 improved epoxy-polymer emulsion. The existence of a second coat implies
16 a surface so coated.
17 CONCLUSION
18 The subject matter of claim 16 would have been obvious to a person
19 having ordinary skill in the art when Air Products' application was filed.
20 Hence, we affirm the rejection of claim 16. Since Air Products has not
21 separately argued the rejection for claims 11 and 13-15, we affirm the
22 rejection of these claims as well. Since all of the claims stand rejected, we
23 elect not to exercise our discretion to enter a new ground of rejection against
24 the claims for indefiniteness under 35 U.S.C. § 112(2).
45 In re Baxter Travenol Labs., 952 F.2d 388, 392, 21 USPQ2d 1281, 1285
(Fed. Cir. 1991).
12
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