Appeal 2007-1941
Application 10/363,159
1 of the invention: “The instant invention does not teach the use of asphalt
2 and specifically teaches the lack of any necessity for asphaltic compacting,
3 as an advantage.” Paper titled “Response to Office Action Mailed 9-29-05,”
4 entered December 12, 2005, p. 3.
5 Applying the Ruschig metaphor (379 F.2d at 994-95, 154 USPQ at
6 122), applicant has identified the location of a forest, but has failed to
7 provide guidance leading to the specific subset of “trees” in that forest , i.e.
8 those that are “not predominately asphalt.”
9 Based upon the record before us, the examiner has established a prima
10 facie case. The examiner has identified sufficient evidence and reasoning
11 why one skilled in the art would not recognize a description of the subgenus
12 of compositions which are “not predominately asphalt.” Wertheim, 541 F.2d
13 at 263, 191 USPQ at 97. The original disclosure does not describe the
14 subject matter of Claims 1-27, 30, 32 and 33 in sufficient detail that one
15 skilled in the art would clearly conclude that the inventor had possession of
16 compositions including asphalt, and in particular, compositions including
17 asphalt in a non-predominate amount, i.e., “at least less than 50% asphalt.”
18 Lockwood, 107 F.3d at 1572, 41 USPQ2d at 1966; Gosteli, 872 F.2d at
19 1012, 10 USPQ2d at 1618. We note that applicant did not submit any
20 evidence, such as declaration testimony, to explain how a person skilled in
21 the art would understand applicant’s disclosure.
22 Applicant has not shown error in the rejection of Claims1-27, 30, 32
23 and 33.
- 8 -
Page: Previous 1 2 3 4 5 6 7 8 9 Next
Last modified: September 9, 2013