Appeal No. 2001-1231
Application No. 08/976,371
on page 19. As correctly found by the examiner, the only value
for “average aggregate branches” for appellants’ carbon black on
page 19 of the specification is 11.2 (under the column for
C.B.A.). Appellants have failed to explain why this single value
would have reasonably conveyed to one of ordinary skill in this
art that appellants had possession of the subject matter in
question, namely the range of “less than about 11.5.” Therefore
we determine that appellants have not met their burden of proof.
For the foregoing reasons and those set forth in the Answer,
we determine that the examiner has established a prima facie case
of unpatentability which has not been sufficiently rebutted by
appellants. Accordingly, we affirm the examiner’s rejection of
claim 14 under the first paragraph of 35 U.S.C. § 112.
B. The Rejection over Warner
The examiner finds that Warner teaches carbon blacks with a
particle size of 15 nanometers (nm) or more and a DBP value of
120 or less (Answer, page 3). The examiner admits that Warner
does not teach “all the claimed properties” but submits that
since Warner teaches the claimed surface area and size, the
“substructure” appears to be the same as that claimed (id.). The
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