Appeal No. 2005-1096
Application 08/894,156
urea [of Henning] is present in an amount of at least 10 mol% based on the
diiocyanate.” (Brief, p. 7).
Appellants assert that the data presented in the specification, Table I,
provides evidence that the amount of stabilizer specified in the present claims
provides unexpected results such as greater viscosity and greater color number.
(Brief, pp. 9-13).
The Examiner, relying in part on our previous decision, asserts that the data
in the specification does not distinguish over the use of equivalent compounds which
are used in comparable amounts within the process. (Answer, p. 5).
We do not agree. The scope of the present claims is not the same as the
claims in the previous appeal. The discussion of the previous appeal recognized
that the appealed claims did not exclude additional amounts of other biuretizing
agents other than tertiary alcohol and water. (Decision, p. 9). However, the present
claims provide amounts for the stabilizer and the biuretizing agents.
To establish a prima facie case of obviousness the Examiner must show that
the applied references themselves would have provided one of ordinary skill in the
art with both a motivation to carry out the Appellants' claimed invention and a
reasonable expectation of success in doing so. See In re Vaeck, 947 F.2d 488, 493,
20 USPQ2d 1438, 1442 (Fed. Cir. 1991); In re O'Farrell, 853 F.2d 894, 902, 7
USPQ2d 1673, 1680 (Fed. Cir. 1988). Motivation for one of ordinary skill in the art
to use the combination of a stabilizer along with biuretizing agents in the amounts as
required by the presently claimed invention is required. The Examiner has not
provided evidence or technical reasoning which shows or suggests the use of
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