Appeal No. 1999-1415
Application 08/784,875
Accordingly, we determine that the comparisons of Comparative Example 5 with the
specification examples representing the invention, particularly Example 4, address the thrust of
the rejection based on the modification of the process of Tate by the use of admittedly known
HDI containing the amounts of carbon dioxide shown in Comparative Examples 8, 9 and 10,
combined with the teaching in Bock to use purified HDI. See In re Burckel, 592 F.2d 1175,
1180, 201 USPQ 67, 71 (CCPA 1979). We consider the comparisons provided by Comparative
Examples 8, 9 and 10 with the specification examples representing the claimed invention,
particularly Examples 11 and 12, to be at best an indirect comparison as the issue of the
substitution of the benzyl substituted catalyst of Tate for the hydroxyalkyl substituted catalysts of
Bock is not directly addressed in the ground of rejection. Cf. In re Blondel, 499 F.2d 1311, 1317,
182 USPQ 294, 298 (CCPA 1974). We note that Examples 4, 6, 7 and 11 use HDI containing 2
ppm carbon dioxide while Example 12 uses HDI containing 10 ppm carbon dioxide.
The process of Comparative Example 5 is reported to produce “a cloudy yellow product”
(specification, page 14, line 30; brief, page 3). The similar processes of the Pedain declaration
Examples 1 and 3 are reported to produce “turbid products” and “deeply coloured endproducts,”
respectively (page 4; brief, page 4).8 We find no evidence in the record that such reported results
are unreliable. In this respect, we agree with appellants that “[s]ince the product of Comparison
Example 5 is not clear it is not possible to measure the [Hazen] color number” because indeed,
such a color number is a measure of the color of a transparent substance as seen from the
translation of Römpp Chemie Lexicon (brief, pages 7-8).
The processes of Comparative Examples 8, 9 and 10 are reported to produce products that
have the Hazen color numbers 70, 90 and 70, respectively (specification, page 18). The
processes of Examples 4, 6, 7, 11 and 12 are reported to produce products that have the Hazen
color numbers 20, 30, 40, 30 and 40 (specification, pages 14-16 and 18). It is apparent that the
determination of the Hazen color number establishes that the products are transparent, and
indeed, the product of Example 4 is described as “a clear, light polyisocyanate” which can be
diluted with xylene “without cloudiness” (specification, page 14, lines 1-2). We find appellants’
8 Declarant Pedain reports that the process of Example 2 thereof resulted in an “uncontrolled
reaction” (page 4).
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