Appeal 2007-1521
Application 10/694,584
Oberthur does not dispute the Examiner's findings that Becke teaches
admixing at least one rubber monomer (butadiene), a vulcanizing agent, and
a metal complex based on monoazadienes of Oberthur's formula (I).
Instead, Oberthur argues that Becke does not teach anti-aging agents.
The difficulty with Oberthur's argument is that it neglects the plain
language of the claims on appeal, namely, that the anti-aging agent is "based
on organic compounds comprising azadiene groups of the general
formula (I)" (Claim 1, line 2; claim 5, line 3; emphasis added.) The term
"based on," in a chemical context, is broad, and includes chemical
derivatives of the compounds shown. If Oberthur intended to restrict the
scope of anti-aging agents to compounds of formula (I), he could have used
such ordinary claim language as "anti-aging agents having general
formula (I)," which would have excluded complexes with metals or other
chemical entities. By choosing the broad (and not specifically defined) term
"based on," Oberthur sought to obtain broader patent protection, at the peril,
here realized, of being exposed to a broader range of prior art.
In the present case, the Examiner has shown that Becke describes
processes that meet the sole recited step of admixing compounds that
Oberthur does not dispute meet the recited compositional limitations of the
appealed claims. Under these circumstances, it is not enough merely to
assert that the metal complexes Becke describes are not "anti-aging agents."
A suitable proof might comprise a two-part showing. The first part
comprises a credible showing of what the art understands "anti-aging
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