Appeal No. 2000-1162
Application 08/967,876
black as specified in appealed claims 5 and 8 with respect to the “surface finish of the claimed
composition when extruded or shaped” which is specified in these claims as a “smooth high
gloss finish” (brief, page 13, first paragraph; see also brief, pages 12-16, and reply brief, pages 3-
7), and that the evidence in the specification establishes “unexpected results” with respect to
Joyner and the “criticality of the analytical properties of the carbon black” with respect to Bush
(reply brief, pages 4-5; see also brief, pages 13-15). In response, the examiner finds that “[t]he
finished appearance is inherent in the composition and tire treads are shiny” (answer, page 4).
We are not persuaded by appellants’ argument that the applied references do not
recognize that when a composition pursuant to the teachings thereof is extruded, a “smooth high
gloss finish” will result. It is well settled that the mere discovery of a new property of a
composition will not, without more, be dispositive of the nonobviousness of the claimed
invention over the reference. See, e.g., In re Spada, 911 F.2d 705, 707-08, 15 USPQ2d 1655,
1657 (Fed. Cir. 1990); Titanium Metals Corp. v. Banner, 778 F.2d 775,782-83, 227 USPQ 773,
779 (Fed. Cir. 1985); In re Skoner, 517 F.2d 947, 950, 186 USPQ 80, 82 (CCPA 1975)
(“Appellants have chosen to describe their invention in terms of certain physical characteristics . .
. . Merely choosing to describe their invention in this manner does not render patentable their
method which is clearly obvious in view of [the reference]. [Citation omitted.]”). Furthermore,
the selection of ingredients for the composition must be considered based on the teachings of
each reference, and not whether the selection would be made based on appellants’ invention. See
generally, See In re Kronig, 539 F.2d 1300, 1304, 190 USPQ 425, 428, (CCPA 1976) (“[I]t is
sufficient here that [the reference] clearly suggests doing what appellants have done.”).
Appellants contend that unexpected results are established by the results reported in the
Table on page 7 of the specification, wherein the compositions of Joyner are alleged to be
“illustrated by the control compositions” designated as “RC” and the “RD” which use “Carbon
blacks C and D,” respectively, that “have analytical properties falling within the broad range
disclosed by Joyner,” which compositions “when extruded have surface finishes and glossmeter
readings falling outside of the scope of the present claims” (reply brief, pages 4-5).
With respect to Bush, appellants merely allege that “the criticality of the analytical
properties of the carbon blacks utilized in the presently claimed EPDM compositions and articles
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