Appeal No. 2006-1958 4
Application No. 10/268,208
Claim 1 requires that the polyether polyol be “initiated with an aliphatic amine”,
while Neuhaus lists a broad variety of comparable “starter molecules” (col. 2, l. 56-62),
only one of which (ethylene diamine) can be characterized as an aliphatic amine. In our
opinion, the disclosure of only one aliphatic amine among a broad variety of starter
molecules, coupled with the broader range of amounts for component (b), in Neuhaus
precludes a finding of anticipation under 35 USC § 102 in this case. Cf. In re
Schaumann, 572 F2d 312, 15-18, 197 USPQ 5, 8-10 (CCPA 1978); In re Petering, 301
F.2d 676, 681, 133 USPQ 275, 279-80 (CCPA 1962). However, we agree with the
examiner that it would have been prima facie obvious, within the purview of 35 USC §
103, to select an amount of polyether polyol within the ambit of the Neuhaus disclosure
which satisfies all the criteria set out in claim 1, absent a showing by the appellants of
any new or unexpected results as compared to other polyether polyols encompassed by
the Neuhaus disclosure. In re Peterson, 315 F.3d 1325, 1329-30, 65 USPQ 2d 1379,
1382-83 (Fed.Cir. 2003); In re Askley, 455 F.2d 586, 587, 172 USPQ 524, 526 (CCPA
1972).
Similar considerations apply to component (c) of claim 1, which corresponds to
component (d) of the Neuhaus formulation. The component in question is a polyether
which, according to claim 1, has a concentration range of 25-50 wt.% which overlaps the
corresponding range disclosed by Neuhaus (col. 2, l. 5-7). The molecular weight range
set forth in Neuhaus for this component (1000-10,000) is embraced by the corresponding
molecular weight range set forth in claim 1.
Claim 1 requires that the polyether have a “maximum of 80% of primary
hydroxyl groups.” We find no express description of this limitation in Neuhaus.
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