Appeal No. 95-3827
Application No. 08/031,793
According to the examiner (Answer, pp.2-3):
Bruchmann differs from the claims by performing
the hydrogenation step on amines, the isocyanate
compound precursor, rather than on the isocyanate
compound formed after phosgenation of the amine.
It would have been obvious to one of ordinary
skill in the art at the time the invention was made
to hydrogenate after phosgenation rather than before
because one would expect a purer product if the
purification step were performed on the product than
the intermediate.
We agree with appellants that the examiner has failed to
provide any factual basis for her conclusion that one having
ordinary skill in the art would have expected a purer product
or realized any other advantage if the purification step were
performed on the isocyanate rather than the corresponding
amine. Based on this record, there would have been no
motivation, absent appellants' disclosure, to hydrogenate the
isocyanate rather than the corresponding amine. See Brief,
p.5. Compare In re Gorman, 933 F.2d 982, 987, 18 USPQ2d 1885,
1888 (Fed. Cir. 1991) (in a determination under 35 U.S.C. §
103, the references themselves, rather than applicant's
disclosure, must provide some teaching whereby the applicant's
combination would have been obvious).
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