Appeal No. 1999-1008
Application 08/713,905
primary reference; nor is it that the claimed invention must be expressly suggested in any one or
all of the references. Rather, the test is what the combined teachings of the references would have
suggested to those of ordinary skill in the art.”).
Appellants apparently agree with the examiner’s position as they make the admissions in
the brief that one of ordinary skill in this art following the teachings of Lehmann and,
individually, each one of Joulak (page 6, last paragraph), Biskup (page 9, first paragraph) and
Bischof (page 10, fourth full paragraph), would have arrived at a process limited to the
phosgenation of the specific ether (poly)amine of Lehman in the vapor phase. While appellants
do modify their admissions with respect to Biskup and Bischof to some extent with the phrases
“disregarding [Lehmann’s] teachings against the use of the high temperatures of Biskup” and
“ignoring [Lehmann’s] teaching with respect to high temperatures,” respectively, we are
convinced that one of ordinary skill in the art would have recognized that the lowest temperatures
disclosed in each of these references, that is, 200°C, is the highest temperature disclosed by
Lehmann, and thus would have conducted the vapor phase phosgenation of the ether (poly)amine
of Lehman at least at this temperature.
Accordingly, on this record, the claimed process as encompassed by appealed claim 1 is
prima facie obvious over the prior art applied by the examiner. We have carefully considered the
arguments against the prima facie case advanced by appellants in the brief and reply brief but
find them unpersuasive of the patentability of the claimed processes over the applied prior art.
We recognize that the claimed processes encompassed by appealed claim 1 are not limited to the
ether (poly)amines specifically required by Lehmann as starting materials. However, while the
claimed process may be of broader scope in this respect, the fact remains that the process of
phosgenating these specific ether (poly)amines as suggested by the applied prior art falls within
appealed claim 1. Thus, appealed claim 1 reads on both obvious and nonobvious subject matter
and therefore, l is too broad in the sense of § 103(a). See, e.g., In re Muchmore, 433 F.2d 824,
826, 167 USPQ 681, 683 (CCPA 1970).
We have carefully considered appellants’ contentions that the yields shown in the
specification Examples are greater than those taught by Lehmann (brief, pages 7-8, 9 and 11).
However, the processes of the specification Examples are not directed to the specific ether
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