Appeal No. 1997-2873
Application 08/417,858
14) and the range of BET specific surface area disclosed in the latter (id., pages 26-28), and while
we agree with appellants that neither reference contains an anticipatory disclosure, we find it
difficult to accept appellants’ contention that one of ordinary skill in this art would not have been
led by either of these references to the claimed compositions because there is no disclosure that
the properties appellants’ ascribe to the claimed compositions would have been obtained with the
specific ingredients which the claimed compositions must at least comprise. Indeed, both
references provide the clear suggestion that vulcanizable compositions prepared according to the
teachings thereof will provide rubber with desirable properties as expected from the teachings
thereof. The fact that neither reference describes the compositions disclosed therein using all of
the properties disclosed as desirable by appellants does not patentably distinguish the references
in the absence of a showing of the criticality of the claimed BET specific surface area range. See,
In re Skoner, 517 F.2d 947, 950, 186 USPQ 80, 82 (CCPA 1975).
In this respect, we have carefully considered the evidence relied upon by appellants as
expressed in the combinations of specification Examples and specification Comparative
Examples (specification, pages 22-33 and 38-43) presented in the brief (pages 26-35). We are
not persuaded by this evidence that the claimed vulcanizable rubber compositions encompassed
by appealed claim 1 are patentable over Kempermann and Thurn for several reasons. The
comparisons on pages 16 and 18 of the brief do not reflect the thrust of the rejection over the
references. See, e.g., In re In re Burckel, 592 F.2d 1175, 1179-80, 201 USPQ 67, 71 (CCPA
1979) (the claimed subject matter must be compared with the closest prior art in a manner which
addresses the thrust of the rejection). The comparison of Example 4 with Comparative Example
5 (brief, page 16) involves two compositions that contain the same alkoxysilane falling within
Formula I of appealed claim 1 but differ in that the EPDM of Example 4 has a Mooney viscosity
of 45 while the EPDM of Comparative Example 5 has a Mooney viscosity of 20 (see page 8 and
Table 1 on page 2 of the specification). Because there is no limitation on the EPDM which can
be used in the compositions of appealed claim 1, the composition of Comparative Example 5
falls within appealed claim 1. In the comparison of Examples 1, 2 and 3 with Comparative
Example 1 (brief, page 18), the Comparative Example simply does not reflect the teachings of
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