Ex Parte VANDEVOORDE et al - Page 4




                Appeal No. 2004-2275                                                                          
                Application No. 09/444,968                                                                    
                invention encompasses a composition from a two-step reaction.  First is the                   
                formation of an intermediate prepolymer (polyurethane) and a                                  
                subsequent step wherein the prepolymer is reacted with  hydroxy                               
                group-containing film forming polymer.  We do not agree.                                      
                       It is well known by persons of ordinary skill in the art that diols,                   
                polyisocyanates and  polyurethanes have different reactive groups.  These                     
                reactive groups can under go various reactions to form other compounds                        
                with different reactive groups.  As stated by Appellants, “[t]he hydroxyl                     
                groups of the diol and the isocyanate groups of the polyisocyanate can                        
                undergo an addition reaction to form urethane groups.  A polyurethane                         
                resin thus prepared no longer comprises the starting compounds, i.e., the                     
                diol as a compound with hydroxyl groups and the polyisocyanate having                         
                isocyanate groups, but a polymer having urethane groups.”  (Brief, p. 7).                     
                       Appellants’ invention is directed to a coating composition                             
                comprising hydroxy group-containing film forming polymer, a                                   
                polyisocyanate compound, and a diol.  The present invention may also                          
                comprise a polyurethane.  (Specification, p. 4).  However, the composition                    
                must contain a diol and a polyisocyanate and an  hydroxy                                      
                group-containing film forming polymer as specified in the claimed                             


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