Appeal No. 1997-2873
Application 08/417,858
Kempermann and Thurn because each of these references disclose compositions that contain a
sulfur containing alkoxysilane and silica along with a EPDM.
Furthermore, the comparisons between an Example and a Comparative Examples on
pages 17 and 19-24 (Examples 1, 2, and 3, each combined with a different two of Comparative
Examples 2, 3, 4, 7, 8, and 9, with the comparison of the Examples with Comparative Examples
7, 8, and 9 summarized on page 24), all differ in the amount of the sulfur containing alkoxysilane
and in the BET specific surface area of the silica ingredient. The difference with respect to the
amount of the alkoxysilane is 1:3 in each comparison with the Comparative Examples being the
higher number, and with respect to BET, the silica of each of the Examples is 50 m2/g while that
of Comparative Examples 2, 3 and 4 is 170 m2/g and of Comparative Examples 7, 8 and 9 is
125 m2/g. In the comparison between the specification Example and the specification
Comparative Example of page 42 of the specification (brief, page 25), wherein a particular
mixing procedure was employed (compare pages 23-24 with pages 40-41 of the specification),
the difference in the amount of the sulfur containing alkoxysilane is 3:2 , with the Example the
higher number, and the difference in BET is 50 m2/g : 35 m2/g, with the Example again the
higher number. We note that in the latter comparison, the rubber is “Buna AP 451,” an
“ethylene-propylene-diene rubber” (specification, page 34), while in the prior comparisons, the
rubber is “ethylene-propylene-5-ethylidene-2-norbornene” which is disclosed to provide “most
excellent results” (specification, pages 7 and 22).
There is no doubt that from the data reported that the compositions of Examples 1-3 out-
performed those of the Comparative Examples in the properties tested. However, we fail to find
in the record any evidence or scientific explanation of the practical significance of these results
with respect to the criticality of the difference in the BET specific surface area of the silica in
view of the large difference in BET between the Examples 1-3 at the low end of the claimed BET
range and the Comparative Examples that are significantly above the high end of the claimed
BET range, and the additional difference in the amount of sulfur containing alkoxysilane. It is
well settled that the burden of establishing the practical significance of data in the record with
respect to unexpected results rests with appellants, which burden is not carried by mere
arguments of counsel. See generally, In re Geisler, 116 F.3d 1465, 1470, 43 USPQ2d 1362,
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