Appeal No. 95-3827
Application No. 08/031,793
The examiner further relies on In re Durden, F.2d 1406,
226 USPQ 359 (Fed. Cir. 1985), to establish the obviousness of
the claimed process (Answer, p.4):
[I]f one looks at the larger picture, the starting
materials are the same (polyamines) and the final
products are the same (polyisocyanates). The two
processes, hydrogenation and phosgenation, are just
switched so that hydrogenation is the second step
versus being the first step performed in converting
polyamines to polyisocyanates according to
Bruchmann.
Appellants dispute the applicability of Durden to the
facts in this appeal (Reply Brief, pp.2-3). Notwithstanding
appellants' argument, we emphasize that Durden has not
dispensed with the fact-intensive inquiry mandated by 35
U.S.C. § 103. See In re Ochiai, 71 F.3d 1565, 1570, 37 USPQ2d
1127, 1132 (Fed. Cir. 1995) ("there are not 'Durden
obviousness rejections' or 'Albertson obviousness rejections,'
but rather only section 103 obviousness rejections"); see also
In re Brouwer, 77 F.3d 422, 426, 37 USPQ2d 1663, 1666 (Fed.
Cir. 1995). Therefore, to the extent that the process claimed
by appellants and the process disclosed in Bruchmann may yield
the same polyisocyanates, this fact alone holds little weight
in the rejection under 35 U.S.C.
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