Appeal No 2007-0310
Application No 10/260,498
polyols. The cited references therefore would have suggested the method of
instant claim 25 to those of ordinary skill in the art.
Appellants argue that the Examiner has failed to “show reasons that
the skilled artisan, confronted with the same problems as the inventor and
with no knowledge of the claimed invention, would select the elements from
the cited prior art references for combination in the manner claimed.”
(Br. 10.) In particular, Appellants argue that Pazos “fails to teach addition
of an acid to the ethylene oxide-capped polyol whereas Doerge and Nagata
et al. do.” (Id.)
We are not persuaded by these arguments. First, we agree with the
Examiner that, through the incorporation by reference of Herold, Pazos does
disclose or suggest adding acid to neutralize the basic catalyst. Second, for
the reasons discussed above, we agree with the Examiner that Doerge and
Nagata each teach that “no precipitate is formed by reaction of the acid with
the basic catalyst,” as recited in claim 25. Third, we agree with the
Examiner that one of ordinary skill in the art would have been motivated to
combine Doerge and/or Nagata with Pazos in order to avoid the need to
remove precipitated salt.
We conclude that the Examiner has set forth a prima facie case that
claim 25 would have been obvious over Herold in view of Nagata and
Doerge, which Appellants have not rebutted. We therefore affirm the
rejection of claim 25 under 35 U.S.C. § 103. Claims 26-28 and 73-78 fall
with claim 25.
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