Ex Parte RICHTER et al - Page 10

               Appeal No. 2007-3827                                                                        
               Application 08/713,905                                                                      

                      Accordingly, upon reconsideration of the facts in the evidence of                    
               record as a whole, we determine that, as a matter of fact, one skilled in this              
               art would not have reasonably recognized in the disclosure in Appellants’                   
               Application as filed, a description of the invention encompassed by appealed                
               claims 1 through 4 which establishes that Appellants were in possession of                  
               the claimed inventions encompassed by these appealed claims, including all                  
               of the limitations thereof, at that time as required by                                     
               § 112, first paragraph, written description requirement.                                    
                      Turning now to the ground of rejection under § 103(a), the Examiner                  
               finds that while Lehmann produces ether (poly)isocyanates from ether                        
               (poly)amines and phosgene but not in the vapor phase, Joulak, Biskup, and                   
               Bischof teach vapor phase phosgenation of diamines “with an attendant                       
               increase in yield, as compared to conventional phosgenation processes                       
               (Answer 4).  The Examiner concludes one of ordinary skill in the art would                  
               have been motivated to use vapor phase phosgenation of Joulak, Biskup, and                  
               Bischof with the ether amines of Lehmann to improve yield (id. 4-5).  The                   
               Examiner finds the Stutz Declaration insufficient to remove the art rejection               
               (id. 5).  According to the Examiner:                                                        
                      Declarer [Stutz] has stated he would not have expected to be                         
                      able to produce an ether (poly)isocyanate under the conditions                       
                      required for gas phase phosgenation of the corresponding                             
                      (poly)amine in view of the cleavage problem associated with                          
                      ether isocyanates.  To support his position, declarer cites                          
                      passages from Annalen der Chemie; however, the cited                                 
                      passages do not appear to closely relate to aspects of vapor                         
                      phase phosgenation; therefore, the passages and the relied upon                      
                      vapor phase phosgenation processes of [Joulak, Biskup, and                           
                      Bischof] lack the necessary nexus to establish a clear                               
                      correlation between the claimed subject matter and the subject                       

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