Appeal No. 2006-2369 Page 10
Application No. 10/169,618
combined with the polysaccharide moiety to produce polysaccharide urethane
derivatives useful in video photographic paper. As acknowledged by the examiner
(Answer, page 4), Sony ‘649 discloses the use of a cyclic alkyl-containing isocyanate,
cyclohexyl isocyanate, see [0009], but does not teach the linear or branched alkyl-
containing isocyanate recited in claim 9.
However, Sony ‘775 lists a linear alkyl isocyanate, octyl isocyanate, alongside
cyclohexyl isocyanate as an isocyanate compound useful in the preparation of
polysaccharide urethane derivatives having utility in video photographic paper coatings.
Sony ‘775, at [0012]. One of ordinary skill would therefore have recognized from Sony
‘775 that octyl isocyanate would have functioned equivalently to cyclohexyl isocyanate
as the isocyanate moiety in polysaccharide urethane derivatives having utility in
coatings for video photographic paper.
Based on this recognized equivalence, one of ordinary skill would have further
recognized the suitability of Sony ‘775’s octyl isocyanate in the hydrolysate-based
urethane derivates disclosed by Sony ‘649, and would therefore have been motivated to
have used the octyl isocyanate of Sony ‘775 as the isocyanate moiety in Sony ‘649’s
hydrolysate-based urethane derivatives. As noted above, “[s]tructural relationships
often provide the requisite motivation to modify known compounds to obtain new
compounds.” In re Mayne, 104 F.3d at 1343, 41 USPQ2d at 1454 (holding fusion
proteins obvious based on the substitution of equivalent amino acids). See also In re
Fout, 675 F.2d 297, 301, 213 USPQ 532, 536 (CCPA 1982) (“Express suggestion to
substitute one equivalent for another need not be present to render such substitution
obvious.”). Because claim 9 recites the use of an isocyanate moiety recognized by
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