Appeal 2006-3071
Application 09/811,987
has multiple hydroxyl groups, neither of which describes addition product
(A) specified in claim 1 (id. 12).
With respect to the ground of rejection under § 103(a), Appellants
submit that Bauriedel “teaches away” from the claimed process, pointing out
that the Bauriedel Examples and the same disclosure in Bauriedel argued
previously do not result in addition product (A) (id. 12-16).
The Examiner responds that Bauriedel discloses processes “where
only a single hydroxyl group remains” in the first stage prepolymer, pointing
to the disclosure of “an unreacted hydroxyl moiety” in Bauriedel at col. 3, l.
45, maintaining that the reference as argued by Appellants “refers not to
individual product molecules but to the . . . reaction mass” (Answer 4-5).
We agree with Appellants that the Bauriedel Examples prepare a first
stage prepolymer from a diisocyanate and a dihydric alcohol which would
not result in a product satisfying the limitations of addition product (A)
specified in appealed claim 1. We further fail to find in Bauriedel a
disclosure which would provide direction to the claimed process
encompassed by claim 1 in a manner reasonably constituting a description
thereof within the meaning of 35 U.S.C. § 102(b). Thus, we reverse the
ground of rejection under this statutory provision. See generally, In re
Spada, 911 F.2d 705, 707 n.3, 15 USPQ2d 1655, 1657 n.3. (Fed. Cir. 1990).
However, we agree with the Examiner that one of ordinary skill in this
art would have reasonably found in Bauriedel the teachings leading to the
preparation of a first stage prepolymer by reacting diisocyanates with
trihydric alcohols and higher alcohols within the “OH:NCO ratio of 0.55-4.1
until virtually all of the faster-reacting of the two isocyanate moieties have
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