Appeal 2007-2739
Application 11/106,321
cracking catalysts, one could simply heat an initial reaction mixture
containing a silylorganocarbamate and a trimerization catalyst, and thereby
generate the isocyanate intermediate via the heat, and ultimately generate the
silylisocyanurate in situ via the trimerization catalyst. We therefore do not
agree with Appellants that the cited references would have failed to provide
the artisan of ordinary skill with sufficient impetus to practice the invention
recited in claim 1.
Nor do we agree that Pepe teaches away from practicing the claimed
invention. While Pepe discloses that the alkoxide and tin cracking catalysts
“facilitate thermal dissociation of the silylorganocarbamate to alcohol and
the silylorganoisocyanate” (Pepe, col. 7, ll. 52-54), we do not see, and
Appellants do not point to, any disclosure in Pepe suggesting that Berger’s
simple heating method would fail to accomplish the cracking step.
Moreover, it is well settled “[n]on-obviousness cannot be established
by attacking references individually where the rejection is based upon the
teachings of a combination of references. . . . [The reference] must be read,
not in isolation, but for what it fairly teaches in combination with the prior
art as a whole.” In re Merck & Co., 800 F.2d 1091, 1097 (Fed. Cir. 1986).
Because Appellants’ “teaching away” argument looks only at Pepe’s
teachings regarding the desirability of cracking catalysts, and ignores Berg’s
teaching that the cracking step can be performed without alkoxide or tin-
containing catalyst, the argument is based on precisely the analysis method
rejected in Merck.
Appellants argue that, through a misunderstanding of the claimed
invention, the Examiner incorrectly states the difference between claim 1
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