Appeal No. 2000-1162
Application 08/967,876
falls within the teachings of Joyner in view of the respective DBP values “69” and “91” because
the only teaching in the reference with respect to this analytical point is that carbon black with
“DBP absorption value of 130-160 cc/100g are preferred in ultra high performance tire treads”
(col. 15, lines 64-66), and thus one of ordinary skill in this art would have employed a carbon
black falling within that range. Therefore, the evidence in the specification does not establish
that the EPDM compositions of Joyner would perform in the manner “illustrated by the control
compositions” designated as “RC” and “RD.” See, e.g., In re Burckel, 592 F.2d 1175, 1179-80,
201 USPQ 67, 71 (CCPA 1979) (the claimed subject matter must be compared with the closest
prior art in a manner which addresses the thrust of the rejection); In re Merchant, 575 F.2d 865,
868, 197 USPQ 785, 787 (CCPA 1978). Even if it can be said that an unexpected result was
shown in the evidence presented in the specification with respect to Joyner, we find no assurance
that the same behavior would be exhibited by other compositions contains carbon blacks having
the DBP values actually taught in the reference. See In re Kulling, 897 F.2d 1147, 1149-50, 14
USPQ2d 1056, 1058 (Fed. Cir. 1990); In re Clemens, 622 F.2d 1029, 1035-36, 206 USPQ 289,
295-96 (CCPA 1980); Greenfield, supra; Lindner, supra.
Accordingly, based on our consideration of the totality of the record before us, we have
weighed the evidence of obviousness found in each of Joyner and Bush with appellants’
countervailing evidence of and argument for nonobviousness and conclude that the claimed
invention encompassed by appealed claims 5 through 11, 13 and 14 would have been obvious
as a matter of law under 35 U.S.C. § 103(a).
The examiner’s decision is affirmed.
No time period for taking any subsequent action in connection with this appeal may be
extended under 37 CFR § 1.136(a).
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