Appeal No. 2006-2369 Page 15
Application No. 10/169,618
both moieties of the molecules, namely the carbohydrate moiety and the carbamoyl
moiety.” Brief, page 8; see also Reply Brief, page 5. Regarding Sony ‘775, Appellants
similarly urge that the reference “only specifically teaches cellulose phenyl urethane and
pullulan phenyl urethane.” Appeal Brief, page 9.
We note, as argued by Appellants, that none of the working examples in Sony
‘649 and ‘775 uses the claimed starch moiety or claimed carbamate, i.e. isocyanate,
moiety. However, in our view, by focusing almost exclusively on the references’
examples, Appellants construe the references too narrowly, ignoring critical disclosures.
Specifically, “in a section 103 inquiry, ‘the fact that a specific [embodiment] is taught to
be preferred is not controlling, since all disclosures of the prior art, including unpreferred
embodiments, must be considered.’” Merck & Co. Inc. v. Biocraft Labs., Inc.,
874 F.2d 804, 807, 10 USPQ2d 1843, 1846 (Fed. Cir. 1989) quoting In re Lamberti, 545
F.2d 747, 750, 192 USPQ 278, 280 (CCPA 1976).)
Thus, “[a]ll the disclosures in a reference must be evaluated, including
nonpreferred embodiments, and a reference is not limited to the disclosure of specific
working examples.” In re Mills, 470 F.2d 649, 651, 176 USPQ 196, 198 (CCPA 1972)
(citations omitted). Sony ‘649’s failure to exemplify a starch hydrolysate as the
polysaccharide moiety does not therefore negate the reference’s disclosure, at
paragraph [0007], that a hydrolysate of starch is suitable as the polysaccharide moiety
in a polysaccharide urethane derivative useful in video photographic paper coatings.
Similarly, the failure of Sony ‘775 to use octyl isocyanate in a working example
preparing a polysaccharide urethane derivate does not negate the disclosure in Sony
‘775, at paragraph [0012], that octyl isocyanate is useful as the isocyanate moiety in
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