Appeal No. 2006-2369 Page 16
Application No. 10/169,618
preparing polysaccharide urethane derivatives having utility in video photographic paper
coatings.
Appellants further urge that the urethanes disclosed by Sony ‘649 are used only
in film products, “in particular as a component of video printing paper[,]” and that the
reference “is absolutely silent about surface-active properties of (poly)saccharide
urethanes and their use as a surface-active agent in accordance with Appellants’
claimed invention.” Appeal Brief, page 8.
We are aware that neither Sony ‘649 nor Sony ‘775 discloses the surface active
properties of the polysaccharide urethane derivatives suggested therein, and that the
references produce the disclosed polysaccharide urethane derivatives for use as
components in coatings for video photographic paper, rather than for their surfactant
properties. However, in this regard we note initially that claim 9 does not contain any
limitation requiring the glucoside alkyl urethane to have surfactant properties.
Moreover, “it is not necessary in order to establish a prima facie case of
obviousness that both a structural similarity between a claimed and prior art compound
(or a key component of a composition) be shown and that there be a suggestion in or
expectation from the prior art that the claimed compound or composition will have the
same or a similar utility as one newly discovered by applicant.” In re Dillon, 919 F.2d at
692-93, 16 USPQ2d at 1901 (emphases in original).
Dillon therefore makes it clear that a chemical compound may be held prima
facie obvious despite the fact that the prior art’s reason for preparing the compound is
different than Appellants’. Thus, the product of claim 9 and the process of claim 14 are
properly considered prima facie obvious because, as discussed supra, Sony ‘649 and
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