Appeal No. 96-1641
Application No. 08/225,036
column 1, lines 66 to 67. Upon comparison of these teachings
with the limitations of claim 5, it is evident that
appellants’ prepolymers may be made from polyols having the
same molecular weight and the same number of hydroxy
equivalents present for each isocyanate.
We reverse the rejection of claim 6. The examiner has
failed to show why a polyol having a molecular weight of
between about 3500 and 4000 as claimed is rendered obvious by
the teaching of Horacek whose polyols do not exceed a
molecular weight of about 2000. The examiner’s argument, in
the Supplemental Examiner’s Answer, p. 6, paragraph 4, is
unpersuasive and not well taken, particularly as the
Examiner’s Answer contains numerous references throughout to
molecular weight limitations in support of the examiner’s
position.
We affirm the rejection of claims 9 and 12. Horacek
discloses polyols having a functionality of 2 to 8 and a
molecular weight of about 62 to about 2000 at column 1, lines
66 to 67. Among the polyols taught at column 2, lines 23 to
37 are polyesters of phthalic or terephthalic acid, "with the
above-mentioned polyols." The molecular weight taught by
12
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