Appeal No. 2006-2369 Page 13
Application No. 10/169,618
Appellants argue that the rejection of product claims 1-7, 9, 11-13 and 15-33 is
based on impermissible hindsight. Brief, pages 6-11; Reply Brief, pages 11-13.
Specifically, Appellants point out that the examiner has acknowledged that Sony ‘649
differs from the claims in that Sony ‘649 is silent with respect to the D.E. value of the
disclosed starch moiety, in that Sony ‘649 discloses the use of only cyclic urethane
derivatives, and in that the compounds prepared in Sony ‘649 have different
physicochemical properties than the claimed compounds. Brief, page 7. Despite the
acknowledged differences between the claims and prior art, urge Appellants, the
examiner “cherry picks from a secondary reference Sony ‘775, to make a case for
obviousness.” Id.
We do not agree that only through the use of impermissible hindsight would one
of ordinary skill have selected a starch hydrolysate as the polysaccharide moiety in
Sony ‘649’s urethane derivatives. As noted supra, paragraph [0007] of Sony ‘649
discloses that, when using a polysaccharide hydrolysate as the carbohydrate moiety of
the disclosed urethane derivatives, one may select from three specifically named
candidates -- cellulose, pullulan and starch. In our view, selecting from a list of three
items does not involve hindsight. Even if the separately discussed polysaccharide
derivatives -- cellulose ester, cellulose ether and chitosan (Sony ‘649, paragraph
[0008]) -- are added to the list, one of ordinary skill had only six polysaccharides from
which to choose. We do not agree that choosing from a list of six specifically named
candidates involves impermissible hindsight.
Appellants also argue that Sony ‘649 “generically discloses that carbohydrates
produced by hydrolysis of polysaccharides, such as cellulose or starch, are suitable
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