compound to yield a urethane compound, which may then be reacted with an aromatic diisocyanate to
yield the allophanate. (Examiner’s Answer, Paper No. 24, p. 4).
The examiner acknowledges that Windemuth fails to disclose “extensive” details regarding the
use of the allophanates in coating compositions. The examiner relies upon Hicks to remedy this alleged
deficiency. Generally, the examiner cites Hicks for its teaching that allophanates can be combined with
aldimines to form a binder for a coating composition. (Paper No. 24, p. 5).
Appellants’ argue that the examiner has failed to establish a prima facie case of obviousness
for the claimed invention. Appellants’ contend that the Windemuth reference teaches the formation of
an allophanate by reacting: (i) an n-substituted carbamic ester; (ii) an aromatically bound
polyisocyanate; and (iii) a compound having an alkylating effect. (Paper No. 23, p. 4). According to
appellants’, Windemuth teaches that the n-substituted carbamic ester can be made from “any hydroxyl
compound with equal success.” (Paper No. 23, p. 4, citing Windemuth, col. 3, lines 22-28).
Furthermore, appellants’ direct our attention to Windemuth’s teaching that the reaction of the hydroxyl
group-containing compounds with the isocyanates may be carried out at an NCO:OH ratio of less than,
equal to, or greater than 1. (Paper No. 23, p. 4, citing Windemuth, col. 4, lines 24-29).
In establishing a prima facie case of obviousness, the prior art reference (or references when
combined) must teach or suggest all the claim limitations. See In re Wilson, 424 F.2d 1382, 1385,
165 USPQ 494, 496 (CCPA 1970) (“All words in a claim must be considered in judging the
patentability of that claim against the prior art.”). Furthermore, any motivation to modify the prior art
references must flow from some teaching in the art that suggests the desirability or incentive to make the
modification needed to arrive at the claimed invention. In re Napier, 55 F.3d 610, 613, 34 USPQ2d
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