Appeal 2007-1386
Application 10/439,922
what is indicated as preferred). See also, In re Gurley, 27 F.3d 551, 553, 31
USPQ2d 1130, 1131 (Fed.Cir.1994)("A reference may be said to teach away
when a person of ordinary skill, upon reading the reference, would be
discouraged from following the path set out in the reference, or would be led
in a direction divergent from the path that was taken by the applicant.").
Appellants argue that the prepolymers of Lorenz are preferably
dissolved in acetone, whereas, in the present invention the prepolymers are
dispersed in water in the absence of organic solvents (Br. 12). We do not
consider this argument relevant to the issue of whether the claims are
obvious in this case because the claim language does not preclude the
presence of organic solvents. See Panduit v. Dennison Mfg. Co., 774 F.2d
1082, 1093, 227 USPQ 337, 344 (Fed. Cir. 1985)(“Patentability begins with
the legal question “what is the invention claimed?”).
Appellants also argue that one of ordinary skill in the art would not
have been motivated to combine Dieterich with Lorenz, because Dieterich is
directed to a process for making water-soluble polymers whereas Lorenz
teaches a process for making aqueous dispersions of polyurethanes, i.e., a
water-insoluble product (Br. 13). We do not find this argument persuasive,
because it fails to address the Examiner’s finding that one of ordinary skill in
the art would have been motivated to use Dieterich’s reaction retarder in
Lorenz Example 1 to slow the reaction to enable better mixing of ingredients
and form a finer dispersion as the prepolymer chain extends in water
(Answer 4). See KSR Int’l Co. Teleflex, Inc., 127 S. Ct. 1727, 82 USPQ2d
1385 (2007)(quoting In re Kahn, 441 F.3d 977, 988, 78 USPQ2d 1329, 1336
(Fed. Cir. 2006))(While the analysis in support of an obviousness
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