Appeal No. 2001-0772
Application No. 09/052,429
The examiner recognizes that Unger does not disclose a semiconducting shield composition,
does not specify the additive amounts used in the first and second steps, and does not suggest adding
carbon black to the elastomer mixture in both steps. See Answer, pp. 2-3. Thus, the examiner relies
on Kotani for its teaching of a semiconducting shield composition and Rubber Technology for its
teaching of mixing a particular amount of carbon black into a material in two stages. See Answer,
p. 2.
The examiner further notes that Unger does not use a mixing extruder comprising a melting
zone and a mixing zone to perform the disclosed method. Nevertheless, the examiner maintains that
(Answer, p. 2):
[M]ixing extruders comprising melting and mixing zones are well known in the art.
At the time of invention one of ordinary skill in the art would have found it obvious
to provide an extruder comprising melting and mixing zones, as commonly practiced
in the art, in the process of Unger, for the benefit of forming a uniform mixture by
melt mixing.
Appellant argues there would have been no reason or motivation to use a melter in the
method of Unger since nothing is being melted in the disclosed method. Brief, p. 4. Indeed, Unger
discloses that the elastomer is in the form of a powder or a granulate when it is removed from the
annular zone mixer. Therefore, it does not need to be rendered flowable or kneadable in the mixing
unit by the application of heat. See col. 5, lines 41-46.
It is well-settled that in order to support a prima facie case of obviousness within the
meaning of 35 U.S.C. § 103, there must be some reason, suggestion or motivation found in the prior
art whereby a person of ordinary skill in the art would have made the modification required.
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