Appeal No. 2006-0574
Application No. 09/878,405
arguments and evidence, we determine that the preponderance of evidence weighs
most heavily in favor of obviousness within the meaning of section 103(a). Therefore
we affirm the examiner’s rejection of the claims on appeal under section 103(a) over
Varughese.
B. The Rejection over JP ‘123
The examiner finds that JP ‘123 discloses rubber compositions which incorporate
the claimed epoxidized natural rubber in conjunction with hydroxyl containing silica filler
(Answer, page 5). Although the examiner admits that the effective degree of
crosslinking limitation is not explicitly disclosed by JP ‘123, the examiner relies on the
rationale discussed above regarding the reasonable belief that this limitation is
possessed by JP ‘123 (id.). The examiner recognizes that the difference between the
claimed subject matter and this reference is that the reference incorporates additional
crosslinking agents (id.). However, the examiner construes the claimed limitation
“essentially without additional crosslinking agents” as including the low amounts of
crosslinking agent added by JP ‘123 (id.).
As correctly argued by appellants (Brief, page 24; Reply Brief, pages 13-14), the
contested claim limitation is clearly defined in the specification at page 7, l. 27-page 8, l.
7. See Phillips v. AWH, 415 F.3d 1303, 1316, 75 USPQ2d 1321, 1329 (Fed. Cir.
2005)(en banc)(the specification is usually the single best guide to the meaning of a
contested term). This definition clearly excludes the amounts of crosslinking agents
found in the examples of JP ‘123 (see Table 1, page 7). However, we also note that the
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