Ex parte KAWAZURA et al. - Page 2

                 Appeal No. 94-4354                                                                                                                   
                 Application 08/037,363                                                                                                               

                 a filler and plasticizer (e.g., col. 3, line 37), was modified to include a polyether ester plasticizer                              
                 along with the requisite amount of filler as disclosed in Schenck (e.g., col. 8, lines   54-59, and                                  
                 col. 9, lines 20-37), it is inescapable that such a combination would not have resulted in a                                         
                 composition containing a base rubber that would be encompassed by the appealed claims.                                               
                 Uniroyal, Inc. v. Rudkin-Wiley Corp., 837 F.2d 1044, 1050-54, 5 USPQ2d 1434, 1438-41 (Fed.                                           
                 Cir.), cert. denied, 488 U.S. 825 (1988).                                                                                            
                          The examiner’s decision is reversed.                                                                                        
                                                                     Reversed                                                                         










                                            BRADLEY R. GARRIS                                    )                                                    
                                            Administrative Patent Judge                          )                                                    
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                                            CHARLES F. WARREN                                    )  BOARD OF PATENT                                   
                                            Administrative Patent Judge                          )    APPEALS AND                                     
                                                                                                 )   INTERFERENCES                                    
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                                            TERRY J. OWENS                                       )                                                    
                                            Administrative Patent Judge                          )                                                    








                 Finnegan, Henderson, Farabow,                                                                                                        

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