1782, 1784 (Fed Cir. 1995); In re Gorman, 933 F.2d 982, 986-87, 18 USPQ2d 1885, 1888, (Fed.
Cir. 1991) (“When it is necessary to select elements of various teachings in order to form the claimed
invention, we ascertain whether there is any suggestion or motivation in the prior art to make the
selection made by the applicant. [Citations omitted] ... The extent to which such suggestion must be
explicit in, or may be fairly inferred from, the references, is decided on the facts of each case in the light
of the prior art and its relationship to the applicants’ invention.”).
The examiner states that the Windemuth reference renders appellants’ allophanate component
“prima facie” obvious. (Paper No. 24, p. 5). Yet, appellants’ claims require, among other things, the
following proportions and properties:
(i) an NCO content of from 3 to 16% by weight;
(ii) an average functionality of 1.8 to 4;
(iii) an allophanate group content of from 5 to 35% by weight, and an average functionality
of less than 1.5 at an NCO/OH equivalent ratio of 1.0:1.0 to 0.5:1.0;
(iv) a hydrocarbon chain content of 10 to 65% by weight;
(v) a distillable diisocyanate content of less than 0.5% by weight.
(See, for example, appellants’ claim 10). The examiner has failed to sufficiently identify where these
proportions and properties are taught or suggested by the cited prior art references. Nor are we able
to surmise the exact nature of the teaching or suggestion that is allegedly provided by the prior art that
would reasonably lead one skilled in the art to appellants’ claim invention.
The decision of the examiner to reject claims 10-20 under 35 U.S.C. § 103 over Windemuth in
view of Hicks is reversed.
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