Appeal No. 1998-3116
Application 08/367,327
with an organic diisocyanate to produce a polyurethane
containing unreacted carboxylic acid groups. Johnston states
that “[t]hese acids are unique because their carboxyl groups
do not react to any significant extent with the isocyanates to
prevent the formation of the desired carboxy [group-containing
polyurethane] resin” (col. 1, lines 24-27).
The examiner argues that it would have been obvious to
one of ordinary skill in the art to use Johnston’s 2,2-
di(hydroxymethyl)alkanoic acid as a component when making
Zaalishvili’s polyester urethane “because Johnston teaches
this for enabling water solubility for cosmetic and
pharmaceutical products, which would result in biodegradable
and physiologically compatible products” (answer, page 4).
Regarding the use requirements of the appellants’ claims 1 and
9, the examiner argues that “[i]t would be obvious to combine
the properties of biodegradability and water solubility for
the applications of Johnston”, see id., which include making
hair sprays and coating pharmaceutical capsules and tablets
(col. 7, lines 8 and 33-38).
The examiner does explain how Johnston discloses that the
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