Appeal 2007-1521
Application 10/694,584
prosecution of an application for patent, “the PTO applies to the verbiage of
the claims the broadest reasonable meaning of the words in their ordinary
usage as they would be understood by one of ordinary skill in the art, taking
into account whatever enlightenment by way of definitions or otherwise that
may be afforded by the written description contained in the applicant’s
specification.” In re Morris, 127 F.3d 1048, 1054, 44 USPQ2d 1023, 1027
(Fed. Cir. 1997). It is well settled that “when the PTO shows sound basis for
believing that the products of the applicant and the prior art are the same, the
applicant has the burden of showing that they are not.” In re Spada, 911
F.2d 705, 708, 15 USPQ2d 1655, 1658 (Fed. Cir. 1990). This is because the
PTO does not have the resources or means to test the prior art or an
applicant's invention. In re Brown, 459 F.2d 531, 535, 173 USPQ 685, 688
(CCPA 1972) ("[a]s a practical matter, the Patent Office is not equipped to
manufacture products by the myriad of processes put before it and then
obtain prior art products and make physical comparisons therewith.").
Because Oberthur's arguments regarding the patentability of claim 5
are essentially identical to his arguments regarding the patentability of
claim 1, we need not address them separately.
Claim 1 recites, in abbreviated form:
A method for reducing the aging characteristics of a rubber
vulcanizate comprising admixing an anti-aging agent, based on
organic compounds comprising azadiene groups of the general
formula (I) * * * with at least one rubber monomer and a
vulcanizing agent.
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