Appeal No. 2001-1986
Application No. 08/719,968
hence I write separately on this issue. Moreover, I would affirm the rejection of claim 23 over
Scheve and the secondary references; hence, on this issue, I respectfully dissent.2
Rejections over Nakatsukasa and secondary references
I concur that the examiner’s rejections over Nakatsukasa and secondary references should be
reversed, but my reasoning differs significantly from that of the majority and that of Appellant, with
which the majority expresses substantial agreement (Decision at 3). I find that Nakatsukasa does
not disclose a urethane prepolymer that can be hydrogenated to meet the limitations of the
prepolymer recited in Appellant’s claims. Although a similar polymer can be constructed3,
Nakatsukasa distinguishes the nature of the urethane segments from the diene rubber segment, X. In
particular, Nakatsukasa teaches that
[a] long hard segment is formed by continuation of
urethane bonds having high polarity and cohesiveness,
and causes microscopic phase separation from a rubber
molecular chain (soft segment) [i.e., X] having low
polarity and cohesiveness. . . In case of using dihydric
alcohol including R4 of more than 2000 molecular
weight, it becomes difficult to cause phase separation
between the hard segment and the soft segment, a
desired object cannot be attained, and hence, molecular
weight of dihydric alcohol including R4 is less than
2 My colleagues take the position that there is only one rejection before the Board. (Decision at 4 n.1.) I find
that the examiner has treated Nakatsukasa and Scheve independently; there is no attempt to combine their teachings.
Moreover, Appellant treated these references independently in the principal and reply briefs. Hence, I too treat the
rejections on the merits, as argued, rather than adhering to the formality of the heading of the rejection, which, in any
event, did not confuse the Appellant.
3 See Nakatsukasa, formula (1), with R4 taken as a “portion excluding a hydroxyl group of dienic liquid rubber
having a hydroxyl group of dihydric alcohol having less than 2000 molecular weight . . . ” (Nakatsukasa at 3, ll. 55–56)
and X taken as “a portion excluding a hydroxyl group of dienic liquid rubber having a hydroxyl group.” (Id. at 4,
ll. 39–40.)
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