Appeal 2007-2739
Application 11/106,321
ordinary skill in the relevant field to combine the elements in the way the
claimed new invention does.” Id.
In recognizing the need to identify a reason for practicing the claimed
invention, however, the Supreme Court cautioned that “[t]he obviousness
analysis cannot be confined by a formalistic conception of the words
teaching, suggestion, and motivation, or by overemphasis on the importance
of published articles and the explicit content of issued patents.” Id. The
Court reasoned that “[w]hen a work is available in one field of endeavor,
design incentives and other market forces can prompt variations of it, either
in the same field or a different one. If a person of ordinary skill can
implement a predictable variation, § 103 likely bars its patentability.” Id. at
1740.
In the instant case, Pepe discloses making a silylisocyanurate using a
reaction mixture containing a silylorganocarbamate, a cracking catalyst, and
a trimerization catalyst (Pepe, col. 3, ll. 43-48). Pepe discloses that the
reaction proceeds by an initial cracking step that converts the
silylorganocarbamate to a silylorganoisocyanate intermediate, followed by
an in-situ trimerization step in which the isocyanate intermediate is
converted to the silylisocyanurate (id. at col. 3, ll. 51-58).
Berger discloses that an alternative method of converting Pepe’s
silylorganocarbamate starting material to the isocyanate intermediate is to
simply heat the reaction mixture under the appropriate conditions, in the
absence of cracking catalysts (see Berger, col. 4, ll. 6-17). Thus, one of
ordinary skill viewing these references in combination would have
recognized from Berger that, as a predictable alternative to using Pepe’s
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