Ex Parte Stevens et al - Page 12


               Appeal No. 2006-2369                                                                        Page 12                   
               Application No. 10/169,618                                                                                            

               polysaccharide urethane derivative is then washed in the precipitating solvent and dried.                             
               Id., at [0020] (“After carrying out settlings . . . the . . . methanol washed them several                            
               times and they carried out reduced pressure drying . . . .”).                                                         
                       Thus, Example 1 of Sony ‘649 discloses making a polysaccharide urethane                                       
               derivative by (1) reacting a polysaccharide with an isocyanate in the presence of an                                  
               inert solvent, (2) precipitating the product by adding the reaction medium to a                                       
               precipitating solvent (methanol) under stirring; (3) isolating and washing the precipitated                           
               product with additional precipitating solvent; and (4) drying the product.  Example 1 of                              
               Sony ‘649 differs from claim 14 only in that claim 14 recites the use of a starch                                     
               hydrolysate as the polysaccharide moiety, and an isocyanate having a linear or                                        
               branched alkyl group as the isocyanate moiety.                                                                        
                       However, as discussed supra, Sony ‘649 discloses, at paragraph [0007], that                                   
               starch hydrolysates are useful in the preparation of the disclosed polysaccharide                                     
               urethane derivatives, and that hydrolysates of relatively high molecular weights are                                  
               “especially . . . suitable.”  Moreover, as also discussed supra, Sony ‘775, at [0012]                                 
               discloses that the linear isocyanate octyl isocyanate is useful in preparing                                          
               polysaccharide urethane derivatives having utility in coatings for video photographic                                 
               paper.  Therefore, in our view, by following the teachings of Sony ‘649 and ‘775, one of                              
               ordinary skill would have recognized that the claimed ingredients would have been                                     
               useful to prepare the claimed compound using the claimed sequence of process steps.                                   
               We therefore agree with the examiner that one of ordinary skill in the art would have                                 
               considered process claim 14 obvious.                                                                                  






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