Appeal No. 1997-2873
Application 08/417,858
(“[W]here general conditions of a claim are disclosed in the prior art, it is not inventive to
discover the optimum or workable ranges by routine experimentation.”). Thus, prima facie, one
of ordinary skill in this art routinely following the teachings of Kempermann would have arrived
at the claimed vulcanizable rubber compositions. See Merck & Co., Inc. v. Biocraft Labs., Inc.,
874 F.2d 804, 807, 10 USPQ2d 1843, 1845-46 (Fed. Cir. 1989); In re Lemin, 332 F.2d 839, 841,
141 USPQ 814, 815-16 (CCPA 1964). It is well settled that where the claimed range is
encompassed by the range disclosed in the applied prior art, the claimed range will not patentably
distinguish the claimed invention from the prior art unless the claimed range is shown to be
critical, such as by a showing of a new or unexpected result. Thus, the burden shifts to appellants
to establish that the presently claimed compositions achieve a new or unexpected result with
respect to the teachings of Kempermann. See In re Geisler, 116 F.3d 1465, 1470, 43 USPQ2d
1362, 1365-66 (Fed. Cir. 1997); In re Woodruff, 919 F.2d 1575, 1577-78, 16 USPQ2d 1934,
1936-37 (Fed. Cir. 1990), and cases cited therein.
We find that Thurn discloses the same vulcanizable rubber compositions as
Kempermann, except in more detail. Indeed, Thurn discloses examples of nonconjugated EPDM
(col. 7, lines 19-25) which can be mixed with other rubbers (col. 7, lines 10-19), examples of
additional sulfur containing alkoxysilanes falling within Formula I of appealed claim 1 (e.g.,
cols. 2-3 and col. 5, lines 45-55), and silica having a preferred BET specific surface area range of
20-400 m2/g, which can be mixed with other fillers (col. 3, line 66, to col. 5, line 26). The rubber
compositions of Thurn can be used for a variety of applications, inter alia, vehicle tires and
damping elements (col. 8, lines 4-11). Thurn discloses a rubber composition in Example 9
thereof (col. 20, and col. 21, lines 4-24) which contains a “Terpolymer ethylene-propylene-rubber
(Keltan 70 of DSM),” “Finely divided, precipitated silica (EXTRUSIL of DEGUSSA)” and “Bis-
[3-triethoxylsilyl-propyl]-tetrasulfide,” and thus contains an EPDM, silica that has a BET
specific surface area of 35 m2/g as we discuss below, and a sulfur containing alkoxysilane falling
in Formula I of appealed claim 1. Other silica exemplified in the Thurn Examples include
“Finely divided precipitated silica (ULTRASIL VN 3 of DEGUSSA)” in Example 2, “finely
divided precipitated silica and hexanetriol (Aktivator R of DEGUSSA)” in Example 2, and
“Finely divided, precipitated silica (ULTRASIL VN 2 of DEGUSSA)” in Example 8. Thurn
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