Appeal No. 1998-3116
Application 08/367,327
carboxy groups of Milligan render the polyurethane water
soluble. Johnston merely teaches that Milligan discloses a
way to include carboxy groups in a polyurethane. Moreover,
the examiner does not explain why using Milligan’s 2,2-
di(hydroxymethyl)alkanoic acid to make Zaalishvili’s polyester
urethanes would render them water soluble or water
dispersible, or why, in view of the disclosure by Zaalishvili
that the solubility of the polyester urethanes in organic
solvents facilitates their processing to articles (page 8),
one of ordinary skill in the art would have desired make the
polyester urethanes water soluble or water dispersible.
The examiner has pieced together teachings from the
Zaalishvili and Johnston disclosures without adequately
explaining why the references themselves would have led one of
ordinary skill in the art to combine these teachings so as to
arrive at the appellants’ claimed invention. The record
indicates that the examiner instead has combined the teachings
of the references based upon the description of the
appellants’ invention in their specification. In doing so,
the examiner used impermissible hindsight in rejecting the
claims. See W.L. Gore & Associates v. Garlock, Inc., 721 F.2d
6
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