Appeal 1997-3039
Application 08/436,939
least 150EC; col. 2, lines 31-32) is higher than the reaction
temperature described by Brahm (10 to 140EC; col. 4, line 14).
Brahm is not concerned with making products having allophanate
groups. Based on the record before us, we are unable to find
any reason, suggestion, motivation or teaching to use the
fatty alcohols having olefinic unsaturation described in Brahm
in the process described by Slack.
There is no basis for concluding that an invention would
have been obvious solely because it is a combination of
elements that were known in the art at the time of the
invention. The relevant inquiry is whether there is a reason,
suggestion, or motivation in the prior art that would lead one
of ordinary skill in the art to combine the teachings of the
references, and that would also suggest a reasonable
likelihood of success. Such a suggestion or motivation may
come from the references themselves, from knowledge by those
skilled in the art that certain references are of special
interest in a field, or even from the nature of the problem to
be solved. Smith Industries Medical Systems, Inc. v. Vital
Signs, Inc., 183 F.3d 1347, 1356, 51 USPQ2d 1415, 1420-21
(Fed. Cir. 1999). In this case, the examiner has failed to
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