Appeal No. 2004-2293 Page 3
Application No. 09/876,778
OPINION
There is no question here that Kurth suggests formulating a composition including a
polyol based on vegetable oil as required by part a) of claim 1 along with ingredients meeting
parts c) through e) of the claim. The question is whether Kurth fairly suggests the additional
inclusion of an ingredient meeting part b) of the claim in the concentration further required by the
claim.
The Examiner’s rejection is based upon the fact that Kurth describes a isocyanate-reactive
component including blown soy oil, crosslinking agent, blowing agent, and catalyst as required
by claim 1, parts a) and parts c) through e). It is further based upon the fact that Kurth also
provides evidence that, conventionally, such isocyanate-reactive compositions were formulated
with petroleum-based polyols of the type required by part b) of claim 1. Kurth seeks to replace
those conventional polyols with vegetable oil based polyols and describes doing so in toto.
However, we agree with the Examiner that once one of ordinary skill in this art understood that
vegetable oil based polyols as well as petroleum-based polyols are useful for formulating
isocyanate-reactive compositions, the use of the two types of polyols together would have been
obvious. When the prior art teaches several compositions useful for the same purpose, it is
prima facie obvious to combine two or more of those compositions for use for the very same
purpose. In re Kerkhoven, 626 F.2d 846, 850, 205 USPQ 1069, 1072 (CCPA 1980).
Appellant argues that there is no motivation to include petroleum-based polyols along
with the vegetable oil based polyols because Kurth teaches avoidance of the petroleum-based
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