Ex Parte CHUNG et al - Page 2


               Appeal No. 2000-1162                                                                                                   
               Application 08/967,876                                                                                                 

               black is present in an amount of 100 to about 300 parts by weight carbon black per 100 parts by                        
               weight ethylene-propylene-diene-monomer (EPDM).                                                                        
                       8.  An ethylene-propylene-diene-monomer (EPDM) composition having a smooth high                                
               gloss finish when extruded comprising ethylene-propylene-diene-monomer (EPDM) and a                                    
               carbon black having a cetyl-trimethyl ammonium bromide absorption value (CTAB) of about 30                             
               m2/g to about 70 m2/g and a dibutyl phthalate adsorption value (DBP) greater than about 125                            
               cc/100g, wherein the carbon black is present in an amount of 100 to about 300 parts by weight                          
               carbon black per 100 parts by weight ethylene-propylene-diene-monomer (EPDM).                                          
                       The appealed claims, as represented by claims 5 and 8, are drawn to an ethylene-                               
               propylene-diene-monomer (EPDM) composition comprising at least an ethylene-propylene-                                  
               diene-monomer (EPDM) and a carbon black characterized with respect to cetyl-trimethyl                                  
               ammonium bromide absorption values (CTAB) and dibutyl phthalate adsorption values (DBP) as                             
               specified in the claims, wherein the carbon black and the EPDM are present in the amounts                              
               specified in the claims, and the composition has a smooth high gloss finish when extruded.                             
               According to appellants, the compositions “are advantageous for use in applications where a high                       
               gloss . . . finish is desirable,” such as for “automotive weather stripping” (specification, page 2).                  
                       The references relied on by the examiner are:                                                                  
               Bush                                          5,236,992                             Aug. 17, 1993                   
               Joyner et al. (Joyner)                         5,272,203                             Dec.  21, 1993                  
                       The examiner has rejected appealed claims 5 through 11, 13 and 14 under 35 U.S.C.                              
               § 102(e) as anticipated by or, in the alternative, under 35 U.S.C. § 103(a) as being obvious over                      
               Joyner.  The examiner has further rejected appealed claims 8 through 11 and 14 under 35 U.S.C.                         
               § 102(e) as anticipated by or, in the alternative, under 35 U.S.C. § 103(a) as being obvious over                      
               Bush.1                                                                                                                 
                       Appellants state in their brief (page 3) that the appealed claims in each ground of                            
               rejection “stand together.”  Thus, we decide this appeal based on appealed claims 5 and 8.                             
               37 CFR § 1.192(c)(7) (1999).                                                                                           
                       We affirm the grounds of rejection under § 103(a) and reverse the grounds of rejection                         
               under § 102(e).                                                                                                        

                                                                                                                                     
               1  The examiner has withdrawn the grounds of rejection under 35 U.S.C. § 112, second paragraph                         
               (answer, page 4).                                                                                                      

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