Ex Parte Buras - Page 4




               Appeal No. 2006-2119                                                                                                    
               Application No. 10/357,977                                                                                              

               Examples 3 to 6 of Liang adding a cross-linker at a temperature of 185°C as specified in the                            
               examples would have been practicing the claimed invention.  See Mehi/Biophile Int'l Corp. v.                            
               Milgraum, 192 F.3d 1362, 1366, 52 USPQ2d 1303, 1307 (Fed. Cir. 1999) ("Where, as here, the                              
               result is a necessary consequence of what was deliberately intended, it is of no importance that                        
               the article's authors did not appreciate the results."); In re Woodruff, 919 F.2d 1575, 1578,                           
               16 USPQ2d 1934, 1936 (Fed. Cir. 1990) ("It is a general rule that merely discovering and                                
               claiming a new benefit of an old process cannot render the process again patentable."); accord                          
               In re Spada, 911 F.2d 705, 708, 15 USPQ2d 1655, 1657 (Fed. Cir. 1990).  As such, Appellant's                            
               description of the cross-linking temperature as "adapted to control the compatibility of the                            
               modified polymer asphalt composition" does not serve to distinguish the claimed invention from                          
               Liang.                                                                                                                  
                       Regarding the rejection under 35 U.S.C. § 103(a), Appellant presents the same argument                          
               discussed above.  As stated above, Liang's disclosure of adding the cross-linker at a temperature                       
               of 185°C renders the claimed subject matter unpatentable.  The examiner presented the                                   
               secondary references to Defoor and Rached as evidence of  cross-linkers known in the art.                               
               Appellant has not specifically addressed the Examiner's motivation for including the cited                              
               references.  Rather, Appellant argues that the additional references do not supply the missing                          
               limitation of a narrow cross-linking temperature range to control the compatibility of the                              
               composition.  This argument is not persuasive for the reasons set forth above and in the Answer.                        





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