Appeal No. 1997-2873
Application 08/417,858
discloses that “[t]ypical examples of siliceous fillers usable in the invention, for example, are
those produced by Degussa, such as silica or silicates under the tradenames; [sic] Aerosil,
Ultrasil, Silteg, Durosil, Extrusil, Calsil, etc.” (col. 5, lines 22-25). Thurn further discloses that
the BET specific surface area of “Ultrasil VN2” is 130 m2/g, and of “Utrasil VN3” is 210 m2/g.
Appellants disclose in their specification that the BET specific surface area of “DUROSIL” is 50
m2/g (pages 22 and 34), of “VN3” is 170 m2/g (page 22), of “VN2” is 125 m2/g (page 38), and of
“Extrusil” is 35 m2/g, all of which are identified as products of Degussa AG, stated by appellants
to be a co-assignee of the claimed invention on appeal (brief, page 2).
Comparing the information with respect to the BET specific surface area of silica
products as disclosed in appellants’ specification to the disclosure or Thurn, we find that the
silica in the rubber composition of Thurn Example 9 has a BET specific surface area of 35 m2/g
and thus differs in this respect from the claimed compositions wherein the lower limit is 50 m2/g.
However, it is apparent that at least “Durosil,” which appears to have a BET specific surface area
of 50 m2/g according to appellants’ specification, is among the range of Degussa silica products
disclosed by Thurn to be suitable in the rubber compositions disclosed therein. Thus, it is
apparent that one of ordinary skill in this art routinely following the disclosure of Thurn, prima
facie, would have arrived at the claimed vulcanizable rubber compositions. See Merck v.
Biocraft, supra; Lemin, supra;. Accordingly, the burden shifts to appellants to establish that the
presently claimed compositions achieve a new or unexpected result with respect to the teachings
of Thurn on the authority we cite above.
Accordingly, since a prima facie case of obviousness has been established over the
applied prior art by the examiner, we have again evaluated all of the evidence of obviousness and
nonobviousness based on the record as a whole, giving due consideration to the weight of
appellants’ arguments and the evidence in the specification. See generally, In re Johnson,
747 F.2d 1456, 1460, 223 USPQ 1260, 1263 (Fed. Cir. 1984); In re Piasecki, 745 F.2d 1468,
1472, 223 USPQ 785, 788 (Fed. Cir. 1984); In re Rinehart, 531 F.2d 1048, 1052, 189 USPQ
143, 147 (CCPA 1976).
We have again considered the teachings of Kempermann and of Thurn in view of
appellants’ arguments based on the more generic disclosure of the former (brief, pages 9-12 and
- 6 -
Page: Previous 1 2 3 4 5 6 7 8 9 10 Next
Last modified: November 3, 2007