Appeal 2006-0886
Application 10/151,093
formulation of a breaker and in concentrations overlapping the claimed
concentrations. That the prior art discloses a multitude of effective
combinations does not render any particular formulation less obvious.
Merck & Co. v. Biocraft Labs., 874 F.2d 804, 807, 10 USPQ2d 1843, 1846
(Fed. Cir.), cert. denied, 493 U.S. 975 (1989). Nor is the presence of other
additives such as polysulfide foreclosed by Appellants’ claim 1. The word
“comprising” opens claim 1 to the presence of such other additives. Nor, in
the present case, is the genus of possible combinations all that much larger
than the genus encompassed by the claims. The selection, for instance, of a
silica filler from a list of silica, aluminosilicates, zeolites and/or carbon black
is hardly unobvious. In fact, Appellants’ composition may also contain a
very large number of additives. Given the knowledge of those of ordinary
skill in the art, such knowledge being evidenced by Lickes, it would have
been obvious to select a combination of additives including those recited in
claim 1 for use in a rubber composition to form a breaker.
Nor can we agree that Lickes must state that resorcinol and a
methylene donor are essential additives to establish a prima facie case of
obvious (Br. 7). It is enough that Lickes suggests the inclusion of these
additives with the other additives discussed in the reference.
Nor can we agree with Appellants that the fact that the working
examples of Lickes exemplify different compositions from that claimed
somehow negates the teachings of the broader disclosure (Br. 8). A
reference may be relied upon for all that it would have reasonably suggested
to one having ordinary skill in the art, including non-preferred embodiments.
Merck & Co v. Biocraft Labs., 874 F.2d 804, 807, 10 USPQ2d 1843, 1847
(Fed. Cir. 1989). Disclosed examples and preferred embodiments do not
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