Appeal No. 2000-1162
Application 08/967,876
With respect to Bush, the examiner finds that the reference discloses a number of ranges
for CTAB and DBP which fall within the ranges for the same in appealed claim 8 (answer, page
4). We find that Bush indeed discloses specific carbon blacks that meet these claim limitations.
See, e.g., Table 3, “Ex. 1” and “MAF” (col. 6, lines 15-26). The examiner acknowledges that “it
would have been obvious . . . to use at least 100 parts of carbon black, in spite of a especially
preferred 40-80 parts” (answer, page 4). Indeed, we find no Bush embodiment which contains a
carbon black and EPDM in amounts satisfying the limitations of appealed claim 8. We find, in
this respect, that Bush discloses that “[g]enerally, amounts of the carbon black product ranging
from about 10 to about 250 parts by weight can be used for each 100 parts by weight of rubber,”
with “amounts varying from about 20 to about 100 parts by weight . . . [to] about 40 to about 40
to about 80 parts of carbon black per 100 parts of rubber” being preferred, wherein “[a]nother
preferred rubber composition is . . . EPDM . . . that is particularly well suited for use in industrial
rubber applications” (col. 2, lines 16-60).
Based on these teachings of Bush, we find that as a matter of fact the reference does not
disclose a specific embodiment that anticipates any of the appealed claims, and the reference fails
to provide clear and unequivocal direction, such as a pattern of preferences, which leads those
skilled in the art to the specified amounts of carbon black per 100 parts by weight EPDM as
required by the appealed claims, as picking and choosing among the teachings of the reference is
necessary for that purpose. Accordingly, we reverse the ground of rejection under § 102(e) over
Bush.
However, on these same facts, we agree with the examiner that, prima facie, one of
ordinary skill in this art routinely working within the teachings of each of Joyner and Bush would
have combined a carbon black having the CTAB and DBP/CTAB values required by appealed
claim 5 with respect to Joyner, and the CTAB and DBP values specified in appealed claim 8 with
respect to Joyner and Bush, with an amount of EPDM falling within the range specified in
appealed claims 5 and 8, in the reasonable expectation of obtaining a composition falling within
the teaching of each of the references. See generally, Merck & Co., Inc. v. Biocraft Labs., Inc.,
874 F.2d 804, 807, 10 USPQ2d 1843, 1845-46 (Fed. Cir. 1989) (“That the ‘813 patent discloses
a multitude of effective combinations does not render any particular formulation less obvious.”);
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