Appeal 2007-2739
Application 11/106,321
only ammonium and alkali and alkaline earth metal carboxylates as cracking
agent” (id.).
The Examiner cites Berger as teaching “a process for making
silylorganoisocyanurate which involves cracking of the corresponding
silylorganocarbamate by heating. . . . Thus, Berger et al[.] clearly teaches
that cracking by heating is enough to promote decomposition of the
carbamate to isocyanate and its subsequent trimerization” (id. at 4, citations
omitted).2
The Examiner urges that while Pepe teaches the use of cracking
catalysts, “the two secondary references clearly teach [the] viability of
omitting a cracking catalyst and thermal activation as well as alkali, alkaline
earth and ammonium salts of organic acids as catalysts” (id.). The Examiner
concludes that one of ordinary skill “would have been motivated to combine
both the primary and secondary references and employ the process taught by
these prior art to the process of making silylorganoisocyanurate without
using alkoxide or tin containing carboxylic acids salt as cracking
catalysts . . .” (id.).
Recently addressing the issue of obviousness, the United States
Supreme Court stated that
[w]hen there is a design need or market pressure to solve a
problem and there are a finite number of identified, predictable
solutions, a person of ordinary skill has good reason to pursue
2 The Examiner cites Barsa as teaching trimerization of isocyanates by
heating in the presence of ammonium or alkali metal salts of organic acids
(Answer 4). Because we conclude that Pepe and Berger support a prima
facie case of obviousness with respect to claim 1, we will not discuss Barsa
further.
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