Appeal No. 1997-1907 Page 7
Application No. 08/265,369
portion of reactant mixture component b of the appealed
subject matter (claims 1 and 8) and hence does not disclose
the claimed composition comprising a reaction product of
appellants’ claimed components a, b and c or the process of
making same (answer, page 2). In an attempt to remedy this
acknowledged deficiency, the examiner additionally relies on
the teachings of Mosbach.
According to the examiner (answer, page 3),
It would have been obvious to one of ordinary
skill in the art at the time the invention was made
to include dimers in Coogan’s dispersible binder
composition because Mosbach shows this as a way of
making films that, upon heating, further cure to
yield films having higher hardness values (col. 7,
line 20) because the dimers revert back to
isocyanate groups on heating to enable further
reaction.
The examiner further states (answer, pages 3-4):
It would have been obvious to choose trimers or
isocyanurates from Coogan’s list of polyisocyanates
because it’s well known in the art what
characteristics isocyanurates will provide coatings.
It would have been obvious to also include dimers
because [M]osbach shows the improvement dimers
provide for coatings.
However, on this record, we disagree with the examiner’s
views on this matter. At the outset, we note that “[b]efore
the PTO may combine the disclosures of two or more references
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