Appeal No. 1997-2873
Application 08/417,858
1365-66 (Fed. Cir. 1997); In re Merck & Co., 800 F.2d 1091, 1099, 231 USPQ 375, 381 (Fed.
Cir. 1986); In re Longi, 759 F.2d 887, 897, 225 USPQ 645, 651-52 (Fed. Cir. 1985); In re
Klosak, 455 F.2d 1077, 1080, 173 USPQ 14, 16 (CCPA 1972); In re D’Ancicco, 439 F.2d 1244,
1248, 169 USPQ 303, 306 (CCPA 1971).
In the absence of such evidence or explanation, we find that the evidence is not based on
comparisons of the claimed compositions and the closest prior art which would establish the
criticality of the BET range specified in appealed claim 1. Indeed, we find no comparison based
on the composition of Thurn Example 9, which appears to differ solely in that the silica
employed therein has a BET of 35 m2/g. The comparison provided by the Example and
Comparative Example of page 42 of the specification does not serve this purpose because it is
not apparent that the rubber is the same and there are differences in the method of mixing as well
as in other ingredients, none of which is excluded by appealed claim 1. See Geisler, supra.
We further find from our analysis that while the reported data establishes an advantage
for the claimed compositions in the individual comparisons, this evidence does not provide a
reasonable basis on which to conclude that the remainder of the enormous number of
vulcanizable rubber compositions encompassed by appealed claim 1 would behave in the same
manner with respect to the great number of compositions taught by Kempermann and Thurn,
which include compositions that fall within the BET range specified in appealed claim 1. Thus,
with respect to the criticality of the BET range, the evidence is not commensurate in scope with
the appealed claims. See, e.g., In re Clemens, 622 F.2d 1029, 1035-36, 206 USPQ 289, 295-96
(CCPA 1980); In re Greenfield, 571 F.2d 1185, 1189, 197 USPQ 227, 230 (CCPA 1978) In re
Lindner, 457 F.2d 506, 508, 173 USPQ 356, 358 (CCPA 1972).
Accordingly, based on our consideration of the totality of the record before us, we have
weighed the evidence of obviousness found in the teachings of Kempermann and the combined
teachings of Kempermann, Thurn, applicants’ disclosure of prior art at page 15, lines 12-25,
Longi, Yamamoto and Schrage with appellants’ countervailing evidence of and argument for
nonobviousness and conclude that the claimed invention encompassed by appealed claims
1 through 12, 14 through 31, 33 and 36, would have been obvious as a matter of law under
35 U.S.C. § 103.
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