Appeal No. 2006-0574
Application No. 09/878,405
These results are not persuasive of non-obviousness for the following reasons.
To be truly comparative, all variables must be kept constant except the one being relied
upon to show unexpected results. See In re Dunn, 349 F.2d 433, 439, 146 USPQ 479,
483 (CCPA 1965). Here Example 5 uses more silica filler than Mix D in Varughese, as
well as using Vulkanox® HS, an antioxidant (see the specification, page 26).
Furthermore, any comparative showing must be commensurate in scope with the
claimed subject matter. See In re Boesch, 617 F.2d 272, 276, 205 USPQ 215, 219
(CCPA 1980). Here Example 5 is specific to a particular ENR and silica in certain
amounts, as well as containing an antioxidant, while the claims on appeal are not so
limited. Finally, we note that, assuming arguendo that the results are comparable,
these examples merely show that Example 5 in the specification produces more
crosslinking than Mix D in Varughese, but does not establish that the effective degree of
crosslinking in Varughese falls significantly below 65% under the claimed time and
temperature conditions.
Appellants argue that they have been able to calculate the effective degree of
crosslinking after no more than 5 minutes of heating at 180°C. for each mixture reported
by Varughese, and the effective degree of crosslinking shown by these reference
mixtures does not fall within the scope of the claims (Brief, pages 19-20; Reply Brief,
pages 7-9). Appellants further argue that Comparative Examples 13 and 14 in Table 4
of the specification show that the claimed limitation is not inherent in Varughese (Brief,
page 20; Reply Brief, page 6).
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