Appeal No. 2001-0070
Application 08/841,209
invention as a whole, including each and every limitation of the claims, without recourse to the
teachings in appellants’ disclosure. See generally, In re Rouffet, 149 F.3d 1350, 1358, 47
USPQ2d 1453, 1458 (Fed. Cir. 1998); Pro-Mold and Tool Co. v. Great Lakes Plastics Inc., 75
F.3d 1568, 1573, 37 USPQ2d 1626, 1629-30 (Fed. Cir. 1996); B.F. Goodrich Co. v. Aircraft
Braking Sys. Corp., 72 F.3d 1577, 1582, 37 USPQ2d 1314, 1318 (Fed. Cir. 1996) (“When
obviousness is based on a particular prior art reference, there must be a showing of a suggestion
or motivation to modify the teachings of that reference. [Citation omitted.] This suggestion or
motivation need not be expressly stated. [Citation omitted.]”); In re Fine, 837 F.2d 1071, 1074-
76, 5 USPQ2d 1596, 1598-1600 (Fed. Cir. 1988); In re Dow Chem. Co., 837 F.2d 469, 473, 5
USPQ2d 1529, 1531-32 (Fed. Cir. 1988).
The examiner finds that “Scholl discloses (page 2) the process of reacting polycarbonates
with alkanolamines (Y=OH) in order to break the polycarbonate down into urethane/carbonate
polyols of lower molecular weight than the original polycarbonate” (answer, page 3). The
examiner further finds that the reference “discloses aliphatic polycarbonates (page 3, line 28)
having the specified molecular weight of the claims (see examples)” and “reacting the resulting
products with polyisocyanate to make polymers (see abstract)” (id.). The examiner identifies
four (4) differences between the claimed process and that of Scholl, and finds that nonetheless,
the claimed process would have been obvious because of the manner in which one of ordinary
skill in the art would have interpreted the teachings of Scholl and information known or
“common” in the art (id., pages 3-4).3
2 Answer, pages 3-4.
3 The examiner compares Scholl with the claimed processes encompassed by appealed claims 5,
12 and 14, but addresses the claimed product encompassed by appealed claims 6, 9 and 13, styled
in product-by-process format based on the same process, the claimed compositions containing
this claimed product as a binder component as encompassed by appealed claims 7 and 10, and
the claimed coating compositions containing this product encompassed by appealed claims 8 and
11, only to the extent of alleging that “[i]t would have been obvious to use” the products of the
process of Scholl “for coatings because coating applications are one of the common applications
for polyurethanes” (answer, page 4). Thus, it seems that the examiner has not considered the
separate patentability of the product claims. See generally, In re Thorpe, 777 F.2d 695, 697, 227
USPQ 964, 966 (Fed. Cir. 1985); In re Wertheim, 541 F.2d 257, 271, 191 USPQ 90, 103-04
(CCPA 1976) (“These claims are cast in product-by-process form. Although appellants argue,
successfully we have found, that the [reference] disclosure does not suggest . . . appellants’
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