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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