Appeal 2007-1386
Application 10/439,922
determination should “identify a reason that would have prompted a person
of ordinary skill in the art to combine the elements”1 in the manner claimed,
“the analysis [of whether the subject matter of a claim is obvious] need not
seek out precise teachings directed to the specific subject matter of the
challenged claim, for a court can take account of the inferences and creative
steps that a person of ordinary skill in the art would employ.”2); DyStar
Textilfarben GmBH & Co. Deutschland KG v. C.H. Patrick Co., 464 F.3d
1356, 1361, 80 USPQ2d 1641, 1645 (Fed. Cir. 2006)(“The motivation need
not be found in the references sought to be combined, but may be found in
any number of sources, including common knowledge, the prior art as a
whole, or the nature of the problem itself.”).
In view of the foregoing, we find that Appellants have failed to
overcome the Examiner’s prima facie showing that claims 2, 4-8, and 14-27
are obvious over Lorenz in view of Dieterich.
OTHER ISSUES
In the event that Appellants elect to continue prosecution of this
Application, we note that the following informality should be addressed for
purposes of compliance with 37 CFR 1.75 (c): Claim 16 is not a proper
dependent claim because “4, 4’-methylene bis (phenyl diisocyanate)” is not
included in the Markush group of claim 8. MPEP § 608.01(n).
1 KSR, 127 S. Ct. at 1731, 82 USPQ2d at 1389.
2 Id., at 1741, 82 USPQ2d at 1396.
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