Appeal No. 1996-1127
Application No. 07/975,587
notwithstanding, Branan's disclosure is not limited to carbon blacks for use in truck and
bus tires. Branan discloses carbon blacks "suitable for various applications and
particularly well suited for use in rubber compositions." (column 1, lines 9 through 12). In
Branan, truck and bus tires are merely examples of a specific applied utility, i.e., Branan
discloses "new rubber compositions, advantageous for use as truck and bus tires,
incorporating the new carbon blacks" (column 1, lines 49 through 51, emphasis added).
Branan, however, is not restricted to that applied utility or that use. As stated in In re
Fracalossi, 681 F.2d 792, 794 n1, 215 USPQ 569, 570 n.1 (CCPA 1982), it is axiomatic
that a reference must be considered in its entirety, and it is well established that the
disclosure of a reference is not limited to specific working examples contained therein.
Here, Branan is prior art not only for the teaching of the specific embodiment recited but for
what it fairly teaches to a person having ordinary skill in the art.
In conclusion, we agree that the carbon black recited in claim 1 would have been
prima facie obvious in view of the closely related carbon black disclosed by Branan.
On this record, appellants do not rely on objective evidence of non-obviousness which
would serve to rebut the prima facie case, e.g., objective evidence establishing that the
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