Appeal No. 2000-0051 Page 5
Application No. 08/545,629
62 through column 7, line 24) may be pre-reacted with an
isocyanate component, that prereaction is only conducted so long
as hydroxy functionality is maintained.
As found by the examiner and noted above, Renk does not
disclose using an organic solvent and a concentration step as
herein claimed. Nor has the examiner fairly explained why the
disparate teachings of Mallonee would have led one of ordinary
skill in the art to modify the method of Renk so as to arrive at
the claimed subject matter, including the above-noted
limitations. “It is well established that before a conclusion of
obviousness may be made based on a combination of references,
there must have been a reason, suggestion or motivation to lead
an inventor to combine those references.” Pro-Mold and Tool Co.
v. Great Lakes Plastics Inc., 75 F.3d 1568, 1573, 37 USPQ2d 1626,
1629 (Fed. Cir. 1996). The examiner (answer, page 5) has only
made general statements regarding non-readily emulsifiable
materials behaving similarly and environmental and economic
concerns as alleged advantages of using a solvent in the method
of Renk based on the teachings of Mallonee without specifying why
one of ordinary skill in the art would have been led by any
particular disclosure of Mallonee to modify the particular method
of Renk so as to arrive at the herein claimed subject matter
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