Appeal 2007-1895
Application 10/719,489
facilitating accelerated bulk cooling thereof” (Br. 12, citing claim 1; original
emphasis omitted). Appellants contend “this limitation is clearly not
disclosed in” Bilgrien and has the advantage, among others, of “substantially
reducing processing time” where Bilgrien “discloses cooling the
composition in the same mixer in which it is formed, and thus, the claimed
limitation is not designed to make Bilgrien’s process continuous (id.).
Appellants further contend that claim 1 does not require either a continuous
process or a batch process, and encompasses both kinds of processes (Reply
Br. 3).
Appellants contend Boudreau is non-analogous art to the claimed
invention and there is no motivation to one of ordinary skill in the art with
knowledge of the problem confronted by Appellants but not of the claimed
invention, to combine this reference with Bilgrien (Br. 13). Appellants
contend that Boudreau does not satisfy either test for analogous art set forth
in In re Clay, 966 F.2d 656, 658, 23 USPQ2d 1058, 1060-61 (Fed. Cir.
1992), because the reference is from a different field of endeavor, that is,
liquid silicone rubbers and not the claimed powdered silicone rubbers, and
based on this difference, the reference would not have commended itself to
the problem addressed by Appellants (Br. 13-15; Reply Br. 4-5). On this
basis, Appellants further contend one of ordinary skill in the art would not
have combined the references and further selected elements of the process
for making a liquid composition in Boudreau for combination with
Bilgrien’s process for making a powder composition (Br. 15; Reply Br.
5-6).
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