defeat patentability of the whole claimed invention; rather,
to establish obviousness based on a combination of elements
disclosed in the prior art, there must be some motivation,
suggestion or teaching of the desirability of making the
specific combination that was made by the applicant)
Our disagreement with the examiner in this appeal is his
finding of motivation. The mere fact that an element is being
used for its known purpose may not be sufficient in a
particular case. In this case, Cook and Konig describe the
use of hydrazide-containing stabilizers and do not give the
slightest hint that a non-hydrazide-containing stabilizer
could be used in place of their hydrazide-containing
stabilizers. Thus, it is not apparent to us why a person of
ordinary skill in the art would have been motivated to use a
non-hydrazide containing stabilizer in the Cook and Konig
inventions. The use of a non-hydrazide-containing stabilizer
would appear to be inconsistent with the inventions described
by Cook and Konig.
The decision of the examiner rejecting claims 1-5 over
Cook or Konig in view of Uhrhan will be reversed.
2. The lack of written description rejection
The examiner found that applicants' specification, as
filed, did not describe a polyisocyanate composition
- 8 -
Page: Previous 1 2 3 4 5 6 7 8 9 10 11 12 13 Next
Last modified: November 3, 2007