Appeal 2007-1692
Application 10/415,009
long felt but unresolved needs, failure of others, etc.” is also relevant.
Graham, 383 U.S. at 17-18, 148 USPQ at 467.
One of the ways in which a claim’s subject matter can be proved
obvious is by establishing that there existed at the time of invention a known
problem for which there was an obvious solution encompassed by the
claims. KSR Int’l v. Teleflex Inc., 127 S. Ct. 1727, 1742, 82 USPQ2d 1385,
1397 (2007).
D. Analysis
In the current case, Schnabel provides evidence that there was a
known problem, i.e., the presence of toxic unreacted diisocyanate, in
prepolymers formed from diisocyanates (FF 4). Schnabel describes a
solution to this problem: A distillation method of removing the toxic
diisocyanate monomers. This evidence of a known problem and its solution
is sufficient to support a prima facie case of obviousness. KSR, 127 S. Ct. at
1742, 82 USPQ2d at 1397.
Appellants contend that there is no incentive to combine the teachings
of Schnabel with the teachings of Bolte because the Schnabel patent issued
years before the Bolte patent (Br. 7). According to Appellants one of
ordinary skill in the art would have discussed the teachings of Schnabel in
the Bolte application if it had been obvious (id.).
We are not persuaded by this argument because it assumes that a later
application must necessarily include everything known to those of ordinary
skill in the art. This is not the case. “[A] prior art reference must be
‘considered together with the knowledge of one of ordinary skill in the
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