Appeal No. 1997-2873
Application 08/417,858
As an initial matter, we find that, when considered in light of the written description in
the specification as interpreted by one of ordinary skill in this art, see, e.g., In re Morris, 127
F.3d 1048, 1054-55, 44 USPQ2d 1023, 1027 (Fed. Cir. 1997), the plain language of appealed
claim 1 requires that the claimed vulcanizable rubber composition comprise at least the three
listed ingredients, that is, any nonconjugated EPDM, any cross-linking system, a specified silica
and a specified alkoxysilane, in any amount, wherein the composition can contain other
components, inter alia, other rubbers, other fillers, softening agents and vulcanization
accelerators (specification, e.g., pages 8-9, 12-13, 14, 15-16). See Exxon Chem. Patents, Inc. v.
Lubrizol Corp., 64 F.3d 1553, 1555, 35 USPQ2d 1801, 1802 (Fed. Cir. 1995) (“The claimed
composition is defined as comprising - meaning containing at least - five specific ingredients.”);
In re Baxter, 656 F.2d 679, 686-87, 210 USPQ 795, 802-03 (CCPA 1981) (“As long as one of
the monomers in the reaction is propylene, any other monomer may be present, because the term
‘comprises’ permits the inclusion of other steps, elements, or materials.”).
We have carefully compared the claimed vulcanizable rubber composition encompassed
by appealed claim 1 with the disclosures of both Kempermann and Thurn and find that we agree
with the examiner that the vulcanizable rubber compositions disclosed in each of these references
encompass the claimed vulcanizable rubber composition. Kempermann discloses an accelerator
mixture for the sulfur vulcanization of rubber compositions, including “ethylene-propylene
terploymers . . . with dienes as the ter component” (col. 2, lines 14-15) that is, EPDM, which
include light fillers, including “precipitated silica” (col. 1, lines 67, to col. 2, line 3), wherein the
mixture consists of sulfur containing alkoxysilanes that fall within Formula I of appealed claim 1
(col. 2, lines 34-43) as well as thiazole, guanidine and thiuram accelerators (see col. 1, line 14, to
col. 2, line 56). Kempermann does not specify whether the EPDM is nonconjugated or the
surface area of the precipitated silica. However, we find that one of ordinary skill in the art
would have known that nonconjugated EPDM is useful in vulcanizable rubber compositions.
We also agree with the examiner that the disclosure of the reference would encompass silica
having a surface area within the range specified in appealed claim 1. Indeed, one of ordinary
skill in this art would have determined the optimum surface area range for precipitated silica with
routine experimentation. See In re Aller, 220 F.2d 454, 456, 105 USPQ 233, 235 (CCPA 1955)
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