Ex parte Kawazura et al.

Board of Patent Appeals and Interferences

Mar 27, 1998

08037363 (B.P.A.I. Mar. 27, 1998)

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THIS OPINION WAS NOT WRITTEN FOR PUBLICATION
The opinion in support of the decision being entered today
(1) was not written for publication in a law journal and
(2) is not binding precedent of the Board.
Paper No. 24
UNITED STATES PATENT AND TRADEMARK OFFICE
_______________
BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
_______________
Ex parte TETSUJI KAWAZURA
and ERI MIURA
______________
Appeal No. 94-4354
Application 08/037,3631
_______________
ON BRIEF
_______________
Before GARRIS, WARREN and OWENS, Administrative Patent Judges.
WARREN, Administrative Patent Judge.
Decision on Appeal and Opinion
This is an appeal under 35 U.S.C. § 134 from the decision of the examiner refusing to
allow claims 1 through 7 as amended subsequent to the final rejection.2
We reverse the rejection of the appealed claims under 35 U.S.C § 103 as being
unpatentable over Aonuma in view of Schenck,3 as set forth in the answer (Paper No. 15), for the
reasons set forth by appellants in their main and reply briefs (Papers No. 13 and 18). We
particularly find that even if a butyl rubber containing composition of Aonuma, which can include

1 Application for patent filed March 26, 1993.
2 Amendments of April 13, 1994 (Paper No. 8) and July 22, 1994 (Paper No. 12).
3 The references are listed at page 4 of the answer.
Appeal No. 94-4354
Application 08/037,363
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a filler and plasticizer (e.g., col. 3, line 37), was modified to include a polyether ester plasticizer
along with the requisite amount of filler as disclosed in Schenck (e.g., col. 8, lines 54-59, and
col. 9, lines 20-37), it is inescapable that such a combination would not have resulted in a
composition containing a base rubber that would be encompassed by the appealed claims.
Uniroyal, Inc. v. Rudkin-Wiley Corp., 837 F.2d 1044, 1050-54, 5 USPQ2d 1434, 1438-41 (Fed.
Cir.), cert. denied, 488 U.S. 825 (1988).
The examiner’s decision is reversed.
Reversed
BRADLEY R. GARRIS )
Administrative Patent Judge )
)
)
)
CHARLES F. WARREN ) BOARD OF PATENT
Administrative Patent Judge ) APPEALS AND
) INTERFERENCES
)
)
TERRY J. OWENS )
Administrative Patent Judge )
Finnegan, Henderson, Farabow,
Appeal No. 94-4354
Application 08/037,363
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Garrett and Dunner
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