Appeal 2006-0886
Application 10/151,093
Appellants argue that Lickes only identifies resorcinol and methylene
donor as possible additives out of many and contains no examples of their
use (Br. 11-12). Appellants also argue that the compositions of Lickes are
not close prior art (Br. 12). But the fact remains that Lickes suggests the use
of methylene donor and resorcinol as well as the other additives in a rubber
composition for tire components such as breakers. Those of ordinary skill in
the art would have expected to obtain the properties conventionally
associated with these additives. Given that fact, the burden is on Appellants
to show that the properties of their claimed compositions are unexpected and
are not just properties that were normally associated with the additives
Lickes shows to be conventional.
Moreover, the data must be commensurate-in-scope with the
protection sought by the claims. See In re Greenfield, 571 F.2d 1185, 1189,
197 USPQ 227, 230 (CCPA 1978) (“Establishing that one (or a small
number of) species gives unexpected results is inadequate proof, for ‘it is the
view of this court that objective evidence of non-obviousness must be
commensurate in scope with the claims which the evidence is offered to
support.’” (quoting In re Tiffin, 448 F.2d 791, 792, 171 USPQ 294, 294
(CCPA 1971))). Appellants test only compositions containing one type of
cobalt melt salt. The tests are also limited to resorcinol and methylene donor
at only one concentration. The claims are much broader.
With regard to the dependent claims we agree with the Examiner that
the compositions of these claims would have been obvious on the basis that
the concentration ranges recited in these claims are encompassed by or
overlap with those disclosed in Lickes (Answer 6 compared to Br 10-11).
Moreover, Lickes suggests the use of carbon black of ASTM designations
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