Appeal No. 1997-3492
Application No. 08/428,994
effective in bonding rubber to metal and are inclusive of the
claimed accelerator compounds. See Brief, p. 10. According
to Delseth (col. 9, lines 55-62):
Examples of other rubbers which may be blended with
cis-polyisoprene include poly-1,3-butadiene,
copolymers of 1,3-butadiene with other monomers, for
example styrene, acrylonitrile, isobutylene and
methyl
methacrylate, ethylene-propylene-diene terpolymers,
and halogen-containing rubbers such as chlorobutyl,
bromobutyl and chloroprene rubbers.
The examiner recognizes that "the claims encompass
essentially the same ingredients in Delseth with exception of
PMS [(para-alkylstyrene)]," but nonetheless urges that:
Delseth at column 9, lines 60, 61 states that
halogen-containing rubbers (hcr) are subjected to
formation of crosslinkable composition with same
ingredients and PMS is a hcr. [See Answer, p. 3.]
Appellants argue (Brief, p. 11):
The Examiner's reasoning appears to be that
since the p-methyl-styrene elastomers of the
invention are halogenated, it would be obvious to
substitute them for the halogenated elastomers of
Delseth et al, and that they would thus be
crosslinked. Applicant submits, however, that
nothing in Delseth et al suggests such a
substitution. Thus, the rejection is a classic
"hindsight" rejection, based on Applicant's own
teaching[.]
We agree. See In re Gordon, 733 F.2d 900, 902, 221 USPQ
1125, 1127 (Fed. Cir. 1984) ("The mere fact that the prior art
4
Page: Previous 1 2 3 4 5 6 7 8 Next
Last modified: November 3, 2007