Appeal No. 2007-3827
Application 08/713,905
solvents as the continuous vapor phase phosgenation methods of each of
Joulak, Biskup, and Bischof. This person would have further recognized
that Lehmann teaches that the ether diisocyanates are obtained in “pure”
form and, like each of Joulak, Biskup, and Bischof, controls the amount of
carbamic acid chloride in the product.
Accordingly, in our view, one of ordinary skill in this art routinely
following the combined teachings of Lehmann, Joulak, Biskup, and Bischof
would have reasonably arrived at the claimed processes encompassed by
appealed claim 1, including all of the limitations thereof arranged as required
therein, without recourse to Appellants’ Specification. See, e.g., In re Kahn,
441 F.3d 977, 985-88, 78 USPQ2d 1329, 1334-37 (Fed. Cir. 2006); In re
Dow Chem. Co., 837 F.2d 469, 473, 5 USPQ2d 1529, 1531 (Fed. Cir.
1988);5 In re Keller, 642 F.2d 413, 425, 208 USPQ 871, 881 (CCPA 1981);6
see also In re O’Farrell, 853 F.2d 894, 903-04, 7 USPQ2d 1673, 1680-81
5 The consistent criterion for determination of obviousness is
whether the prior art would have suggested to one of ordinary
skill in the art that [the claimed process] should be carried out
and would have a reasonable likelihood of success, viewed in
light of the prior art. [Citations omitted] Both the suggestion
and the expectation of success must be founded in the prior art,
not in the applicant’s disclosure.
Dow Chem., 837 F.2d at 473, 5 USPQ2d at 1531.
6 The test for obviousness is not whether the features of a
secondary reference may be bodily incorporated into the
structure of the primary reference; nor is it that the claimed
invention must be expressly suggested in any one or all of the
references. Rather, the test is what the combined teachings of
the references would have suggested to those of ordinary skill
in the art.
Keller, 642 F.2d at 425, 208 USPQ at 881.
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