Appeal No. 2006-2119
Application No. 10/357,977
Examples 3 to 6 of Liang adding a cross-linker at a temperature of 185°C as specified in the
examples would have been practicing the claimed invention. See Mehi/Biophile Int'l Corp. v.
Milgraum, 192 F.3d 1362, 1366, 52 USPQ2d 1303, 1307 (Fed. Cir. 1999) ("Where, as here, the
result is a necessary consequence of what was deliberately intended, it is of no importance that
the article's authors did not appreciate the results."); In re Woodruff, 919 F.2d 1575, 1578,
16 USPQ2d 1934, 1936 (Fed. Cir. 1990) ("It is a general rule that merely discovering and
claiming a new benefit of an old process cannot render the process again patentable."); accord
In re Spada, 911 F.2d 705, 708, 15 USPQ2d 1655, 1657 (Fed. Cir. 1990). As such, Appellant's
description of the cross-linking temperature as "adapted to control the compatibility of the
modified polymer asphalt composition" does not serve to distinguish the claimed invention from
Liang.
Regarding the rejection under 35 U.S.C. § 103(a), Appellant presents the same argument
discussed above. As stated above, Liang's disclosure of adding the cross-linker at a temperature
of 185°C renders the claimed subject matter unpatentable. The examiner presented the
secondary references to Defoor and Rached as evidence of cross-linkers known in the art.
Appellant has not specifically addressed the Examiner's motivation for including the cited
references. Rather, Appellant argues that the additional references do not supply the missing
limitation of a narrow cross-linking temperature range to control the compatibility of the
composition. This argument is not persuasive for the reasons set forth above and in the Answer.
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