Appeal No. 2001-0070
Application 08/841,209
Appellants point out essentially the same differences identified by the examiner from
prior Office actions, but limit their argument to the limitations in appealed claim 1 that the
product prepared by the specified process is “a hydroxy-functional polyurethane carbonate
having a molecular weight of up to about 450” because the reactants “a dihydroxy- or higher
hydroxy-functional polymer having . . . optionally ester groups” and “a compound containing at
least one primary or secondary amino group and at least one hydroxy group . . . are present in
amounts which correspond to a molar ratio of carbonate and ester groups . . . to primary and
secondary amino groups . . . of greater than 1:1 to 3:1” (brief, pages 2-4). Appellants present
submit arguments with respect to whether Scholl or any knowledge in the art would have led one
of ordinary skill in this art to modify the process of the reference in order to arrive at the claimed
product, supporting several arguments with evidence in Polyurethane Handbook, pages 21 and
5134 (id., pages 3-6; see also reply brief).
In response, the examiner does not address any of the points raised by appellants, taking
the position that the claimed product, alleged to be “a mixture of products” including “chain
extenders and polyols,” would have an average molecular weight that “could be less than 450,”
relying on the section of the Polyurethane Handbook cited by appellants (answer, page 4).
Appellants contend that “the subject claims are only directed to polyols, not mixtures of polyols
and chain extenders” (reply brief, page 2).
On this record, even if it may be said that the examiner established a prima facie case in
the first instance, appellants certainly carried the burden of arguing to the contrary by pointing
out that Scholl, taken as a whole and in light of knowledge generally available to one of ordinary
skill in the art, does not provide any objective teaching, suggestion or motivation that would have
led that person to the claimed invention as a whole. Thus, appellants’ response shifted the
burden back to the examiner to again establish a prima facie case on the record as a whole,
including consideration of appellants’ arguments and evidence in support thereof, in order to
process, the patentability of the products defined by the claims, rather than the processes for
making them, is what we must gauge in light of the prior art.”). Appellants have addressed the
ground of rejection as set forth by the examiner, stating that the appealed claims are “appealed
together” (brief, page 3).
4 2nd ed., Gübter Oertel, ed., New York, Hanser Publishers, 1985.
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