Ex Parte Corveleyn

Board of Patent Appeals and Interferences

Sep 28, 2005

10009353 (B.P.A.I. Sep. 28, 2005)

- 1 -
The opinion in support of the decision being entered
today was not written for publication and is not binding
precedent of the Board.

UNITED STATES PATENT AND TRADEMARK OFFICE
_______________

BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
_______________

Ex parte STEVEN G. CORVELEYN
______________

Appeal No. 2005-2679
Application 10/009,353
_______________

ON BRIEF
_______________

Before GARRIS, WARREN and TIMM, Administrative Patent Judges.

WARREN, Administrative Patent Judge.
Decision on Appeal and Opinion
We have carefully considered the record in this appeal under 35 U.S.C. § 134, and based
on our review, find that we cannot sustain the rejection of appealed claims 16, 17 and 19 through
21 under 35 U.S.C. § 103(a) as being unpatentable over Dawes et al. (Dawes) (answer, pages
4-6).1
We refer to the answer and to the brief for a complete exposition of the positions
advanced by the examiner and appellant.
The dispositive issue in this appeal is the interpretation of the term “blended” in the claim
language “a fluoroelastomer blended with a mineral oil” of representative appealed claim 16,

1 Claims 1 through 15 and 23 through 26 are also of record and have been withdrawn from
consideration by the examiner under 37 CFR § 1.142(b). Claims 1 through 17 and 19 through 26
are all of the claims in the application. See the appendix to the brief.
Appeal No. 2005-2679
Application 10/009,353
- 2 -
when given the broadest reasonable interpretation in its ordinary usage as would be understood
by one of ordinary skill in the art in light of the written description in the specification as
interpreted by this person, and without reading into the claim any limitation or particular
embodiment disclosed in the specification. See, e.g., In re Morris, 127 F.3d 1048, 1054-55,
44 USPQ2d 1023, 1027 (Fed. Cir. 1997); In re Zletz, 893 F.2d 319, 321-22, 13 USPQ2d 1320,
1322 (Fed. Cir. 1989). We find it readily apparent from the written description in the
specification that the term “blended” is employed with its ordinary meaning in context of
combined in a mixture, which meaning is consistent with the ordinary, dictionary definition of
the term in technical and non-technical dictionaries.2 Thus, claim 16 encompasses
fluoroelastomer compositions comprising at least a fluoroelastomer blended, that is, mixed, with
a mineral oil, as appellant argues (brief, e.g., pages 14-15).
We find as does appellant (brief, e.g., pages 9-10), that the extruded core of
fluoroelastomer of Dawes is coated by a low viscosity liquid, which can contain mineral oil, that
“displaces the polymeric core material from contact with the die wall,” wherein the reference
specifically would have taught that “[t]he low viscosity liquid does not become mixed with the
polymeric core material under processing conditions” (e.g., col. 4, ll. 19-22, 26-31 and 65-67,
and col. 5, ll. 1-9, 15-16, 28-32 and 42-44). The examiner does not deny the teachings of the
reference, contending that “it is immaterial whether fluoroelastomer and mineral [sic, oil] are
blended or simply brought into contact with each other,” because according to the examiner, the
reference “discloses a composition that contains all the (claimed) ingredients” and since “[a]
lubricant is known to be admixed with a polymeric matrix,” the reference “would have provided
enough incentive to one to arrive at instant invention” (answer, page 5). The examiner
disregards the limitation “blended with” as a product-by-process limitation, pointing out that
such a claim is directed to products which are “obvious from the product of the prior art even if
prior art product was made by a different process” (id.).
It is well settled that the examiner has not established a prima facie case of obviousness

2 See generally, The American Heritage College Dictionary Third Edition 148 (Boston,
Houghton Mifflin Company, 2000); McGraw-Hill Dictionary of Scientific and Technical Terms
239 (5th ed., Sybil P. Parker, ed., New York, McGraw-Hill, Inc. 1994)
Appeal No. 2005-2679
Application 10/009,353
- 3 -
when all of the claim limitations have not been considered. See, e.g., In re Geerdes, 491 F.2d
1260, 1262-63, 180 USPQ 789, 791-92 (CCPA 1974) (In considering grounds of rejection under
35 U.S.C. §§ 103 and 112, “every limitation in the claim must be given effect rather than
considering one in isolation from the others.”). In the present appeal, the limitation “a
fluoroelastomer blended with a mineral oil” in claim 16 simply requires a mixture, whether this
claim language is considered as plainly requiring a mixture, or as a process-by-product step
characterizing the claimed product as a composition formed as a mixture by any manner of
process. We agree with appellant that the examiner has disregarded this limitation and, indeed,
has not attempted to establish that one of ordinary skill in this art would have found in the
disclosure of the reference a teaching or inference that a coating liquid containing a mineral oil is
in fact admixed or can be admixed with the core fluoroelastomer in spite of the clear teaching of
Dawes that the coating and core do “not become mixed.” See generally, In re Kotzab, 217 F.3d
1365, 1370, 55 USPQ2d 1313, 1316-17 (Fed. Cir. 2000), citing B.F. Goodrich Co. v. Aircraft
Braking Sys. Corp., 72 F.3d 1577, 1582, 37 USPQ2d 1314, 1318 (Fed. Cir. 1996), (“Even when
obviousness is based on a single prior art reference, there must be a showing of a suggestion or
motivation to modify the teachings of the reference.”); see also In re Rouffet, 149 F.3d 1350,
1358, 47 USPQ2d 1453, 1458 (Fed. Cir. 1998) (“hindsight” is inferred when the specific
understanding or principal within the knowledge of one of ordinary skill in the art leading to the
modification of the prior art in order to arrive at appellant’s claimed invention has not been
explained).
Accordingly, the examiner has not established a prima facie case of obviousness on this
record, and therefore, we reverse the ground of rejection of appealed claims 16, 17 and 19
through 21 under 35 U.S.C. § 103(a).
The examiner’s decision is reversed.

Reversed
Appeal No. 2005-2679
Application 10/009,353
- 4 -

BRADLEY R. GARRIS )
Administrative Patent Judge )
)
)
)
CHARLES F. WARREN ) BOARD OF PATENT
Administrative Patent Judge ) APPEALS AND
) INTERFERENCES
)
)
CATHERINE TIMM )
Administrative Patent Judge )

3M Innovative Properties Company
PO Box 33427
Appeal No. 2005-2679
Application 10/009,353
- 5 -
St. Paul, MN 55144-3427