Appeal 2007-2739
Application 11/106,321
starting material is made. Moreover, claim 1 uses the transitional term
“compr[]ises” to delimit the process. Claim 1 therefore does not exclude
preparing the silylorganocarbamate by Berger’s methods. See Invitrogen
Corp. v. Biocrest Mfg., L.P., 327 F.3d 1364, 1368 (Fed. Cir. 2003) (“The
transition ‘comprising’ in a method claim indicates that the claim is open-
ended and allows for additional steps. Claim 1 uses the open-ended
transition ‘comprising’ to introduce the recited steps. Thus the claim signals
to patent practitioners that claim 1 allows activity . . . before the recited
steps.” (citations omitted)).
Moreover, we do not agree that the combination of Pepe and Berger
fails to suggest leaving out Pepe’s metal alkoxide and tin cracking catalysts.
As discussed above, Berger teaches that those catalysts are not needed when
the reaction mixture is heated under the appropriate conditions (Berger, col.
4, ll. 6-10). Thus, as disclosed by Berger, the heating would by itself
convert the silylorganocarbamate to the silylorganoisocyanate intermediate.
As disclosed by Pepe, the alkali or alkaline earth carboxylates present in the
heated reaction mixture would allow the silylorganoisocyanate to trimerize
to form the silylisocyanurate.
Appellants argue that because Barsa does not disclose making
silylisocyanurate, the process disclosed in Barsa is not sufficiently analogous
to that recited in claim 1 to render it obvious (Br. 9-10).
We are not persuaded by this argument. As discussed above, we
agree with the Examiner that the combination of Pepe and Berger is
sufficient to render claim 1 prima facie obvious. Thus, even assuming for
argument’s sake that the compounds prepared in Barsa are not relevant to
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