Appeal No. 2005-0836 Page 8
Application No. 09/880,292
Claims 4, 5, 23
With regard to claims 4, 5, and 23, Appellants argue that the references fail to teach or
motivate a skilled artisan to select a composition with the ingredients in the concentrations of the
claims (Brief, p. 4). But once one of ordinary skill in the art understands from the disclosure of
Torri and Drieskens that barium sulfate is a useful filler for sound-deadening asphalt emulsion
compositions, one of ordinary skill in the art would have performed routine experimentation to
obtain the workable or optimum concentrations of emulsion and filler for the very same
application of sound-deadening. See In re Boesch, 617 F.2d 272, 276, 205 USPQ 215, 219
(CCPA 1980). Note also In re Woodruff, 919 F.2d 1575, 1578, 16 USPQ2d 1934, 1936-37 (Fed.
Cir. 1990), and In re Aller, 220 F.2d 454, 456, 105 USPQ 233, 235 (CCPA 1955). The same
holds for concentrations of the known emulsifiers, i.e., clay and nonionic surfactants, as well as
solids content.
We conclude that the Examiner established a prima facie case of obviousness with
respect to the subject matter of clams 4, 5, and 23 which has not been sufficiently rebutted by
Appellants.
Claims 27, 28, 31, and 32
Appellants also argue that the references do not teach or motivate one skilled in the art to
select the nonionic surfactant subspecies of claims 27, 28, 31, and 32 (Brief, p. 4). But
Appellants do not address the Examiner’s specific finding that Melvold and Woodruff disclose
that such nonionic surfactants were known in art nor do Appellants address the Examiner’s
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