Appeal No. 1997-1787
Application 08/296,628
the absence of volatile mono- and di-isocyanates and (3) the viscosity shown in the claims. Answer, p.
3.
With respect to the first difference, the examiner finds that Kubitza teaches coating
compositions using aliphatic isocyanates. The examiner then concludes that
It would have been obvious to use the specific polyisocyanates of Kubit[z]a in
Markiewitz’s coating because Kubit[z]a teaches better resistance to chemicals
and solvents (col. 1, lines 30-31) when using these polyisocyanates versus
those of conventional polyurethanes.
Answer, p. 4.
Applicants point out, however, that the two references describe different catalyst systems to
effect curing. Reply Brief, p. 3. Markiewitz uses a trimerization catalyst, which results in a heat curable
coating. On the other hand, Kubitza describes the use of a catalyst which results in a moisture-curable
coating. There is nothing in the two references which would suggest that the trimerization catalysts used
by Markiewitz to cure aromatic isocyanates would be effective catalysts for the aliphatic isocyanates
described by Kubitza. Based on the teachings of the two references, we can not conclude that a
person having ordinary skill in the art would have a reasonable expectation of success in substituting the
aliphatic isocyanates disclosed by Kubitza for the aromatic isocyanates in the trimerization catalyst
coating described by Markiewitz . “Where claimed subject matter has been rejected as obvious in
view of a combination of prior art references, a proper analysis under § 103 requires, inter alia,
consideration of two factors: (1) whether the prior art would have suggested to those of ordinary skill
in the art that they should make the claimed composition or device, or carry out the claimed process;
and (2) whether the prior art would also have revealed that in so making or carrying out, those of
ordinary skill would have a reasonable expectation of success.” In re Vaeck, 947 F.2d 488, 493, 20
USPQ2d 1438, 1442 (Fed. Cir. 1991); In re Dow Chemical Co., 837 F.2d 469, 473, 5 USPQ2d
1529, 1531 (Fed. Cir. 1988). In proceedings before the PTO the examiner has the burden of
establishing the prima facie case of unpatentability. In re Oetiker, 977 F.2d 1443, 1445, 24 USPQ2d
3
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