Appeal 2007-1392
Application 10/640,895
Under 35 U.S.C. § 103, the factual inquiry into obviousness requires a
determination of: (1) the scope and content of the prior art; (2) the
differences between the claimed subject matter and the prior art; (3) the level
of ordinary skill in the art; and (4) secondary considerations. See Graham v.
John Deere Co. of Kansas City, 383 U.S. 1, 17-18, 148 USPQ 459, 467
(1966). “[A]nalysis [of whether the subject matter of a claim is obvious]
need not seek out precise teachings directed to the specific subject matter of
the challenged claim, for a court can take account of the inferences and
creative steps that a person of ordinary skill in the art would employ.” KSR
Int’l Co. v. Teleflex, Inc., 127 S. Ct. 1727, 1740-41, 82 USPQ2d 1385, 1396
(2007), quoting In re Kahn, 441 F.3d 977, 988, 78 USPQ2d 1329, 1336-37
(Fed. Cir. 2006). The analysis supporting obviousness, however, should be
made explicit and should “identify a reason that would have prompted a
person of ordinary skill in the art to combine the elements” in the manner
claimed. KSR, 127 S.Ct. at 1731, 82 USPQ2d at 1389.
Applying the preceding legal principles to the factual findings in the
record of this appeal, we determine that the Examiner has established a
prima facie case of obviousness, which case has not been adequately
rebutted by Appellant’s arguments. As shown by the factual findings above,
we determine that the Smits and Imperial Chemical references each clearly
describe manufacturing polyisocyanurate insulation foams wherein an
isocyanate compound is mixed with a polyol compound combined with
blowing agent comprising both isopentane and n-pentane in the substantial
absence of cyclopentane (Smits, Examples 12, 16, and 19; Imperial
Chemical comparative example 2 (Table 4)). Further, Soukup describes that
7
Page: Previous 1 2 3 4 5 6 7 8 9 Next
Last modified: September 9, 2013