Appeal 2006-0886
Application 10/151,093
tire including the belt structure of a tire (col. 3, ll. 39-55) and as evidenced
by Nguyen, and not disputed by Appellants, this was known as the breaker
of the tire (Nguyen, col. 4, ll. 32-33).
The Examiner has established a prima facie case of obviousness based
on Lickes alone as well as Lickes in combination with Nguyen. We note
that it is well settled that it is not inventive to discover the optimum or
workable ranges by routine experimentation. In re Geisler, 116 F.3d 1465,
1470, 43 USPQ2d 1362, 1365 (Fed. Cir. 1997)(quoting In re Aller,
220 F.2d 454, 456, 105 USPQ 233, 235 (CCPA 1955)). Where the
difference between the claimed invention and the prior art is some range or
other variable within the claims, the applicants must show that the particular
range is critical, generally by showing that the claimed range achieves
unexpected results relative to the prior art range. In re Woodruff, 919 F.2d
1575, 1578, 16 USPQ2d 1934, 1936 (Fed. Cir. 1990).
Appellants argue that the Examiner has provided no motivation within
the prior art to select the combination of additives claimed (Br. 7). This is
because, according to Appellants, Lickes only mentions the possible use of a
very large number of additives in combination with a polysulfide
composition and does not contain any specific teaching or working example
which would direct a skilled artisan to the presently claimed combinations
(Br. 6). According to Appellants, they have discovered that resorcinol and a
methylene donor are critically important breaker rubber additives and are
essential to the compositions of the present invention (Br. 6).
We do not agree that there is no “motivation” as that word is used in
the legalistic sense in the obviousness analysis. Here, each of the claimed
additives is suggested by Lickes for use in a rubber composition for
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