Appeal No. 2006-2369 Page 6
Application No. 10/169,618
substituted with an aminocarbonyloxy group. Answer, page 3. The examiner notes that
Sony ‘649 states that starch hydrolysates are suitable polysaccharides. Id.
The examiner argues that the D.E. values recited in the claims are either inherent
in the disclosed hydrolyzed starting materials, which contain di-, tri-, tetra- and
oligosaccharides or would have been obvious “in view of the explicit disclosure that
substantially hydrolyzed starches and other polysaccharides are suitable for the
invention.” Id.
The examiner also argues that the DS values recited in the claims are disclosed
by Sony ‘649. See the Examiner’s Answer, page 4: Sony ‘649 “explicitly discloses that
the molar ratio of NCO groups per hydroxyl groups can be anywhere between 1:0.5 to
1:10. Using [the] lower ratio of cyano groups in the reaction would inherently result [in]
the claimed degree of hydroxyl group substitution.”
The examiner acknowledges that the compounds in Sony ‘649 have cyclic or
aromatic substituents, not the alkyl substituents recited in the claims, but cites Sony
‘775 for this limitation. Id. Sony ‘775 discloses the preparation of polysaccharide
urethane derivatives for use in “video photographic paper.” Sony ‘775, English
translation, abstract; see also [0001]. The examiner concludes that it would have been
obvious to substitute octyl isocyanate for the cyclohexyl isocyanate taught by Sony ‘649
because Sony ‘775 teaches that both compounds are appropriate for making urethane
derivatives to use in photographic paper. Examiner’s Answer, page 4.
Regarding the claimed process, the examiner indicates that the steps in the
illustrative examples of Sony ‘649 “fully correspond[] to the steps of claim 14.
Modification and substitution of the reactants in the process disclosed in Sony ‘649
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