Appeal 1997-3039
Application 08/436,939
The examiner found, inter alia, that fatty alcohols
having 10 to 20 carbon atoms includes fatty alcohols with
olefinic double bonds. Accordingly, the examiner reasons that
applicants have selected one of many hydroxy-containing
compounds described as useful for making the polyisocyanates
containing allophanate groups. Assuming arguendo the
correctness of the examiner's finding, the rejection cannot be
sustained on the basis of the rationale of the Federal Circuit
in In re Baird, 16 F.3d 380, 382, 29 USPQ2d 1550, 1552 (Fed.
Cir. 1994) (fact that claimed compound may be encompassed by a
disclosed generic formula does not by itself render that
compound obvious).
Alternatively, the examiner cites Brahm and published
Canadian Patent Application 2,115,684 (equivalent documents)
for the proposition that it is known to react isocyanates with
fatty alcohols having olefinic unsaturation (Brahm, col. 3,
lines 49-54). Based on what is taught by Brahm, the examiner
reasons that it would have been obvious to use a fatty alcohol
having olefinic unsaturation in the process described by
Slack. The examiner's reasoning is based on impermissible
hindsight. The reaction temperature described by Slack (at
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