Before Clevenger, Circuit Judge, Smith, Senior Circuit Judge, and Schall, Circuit Judge.
NOTE: Pursuant to Fed. Cir. R. 47.6, this Disposition is not citable as precedent. It is a public record. The Disposition will appear in tables published periodically.
Opinion for the court filed by Circuit Judge SCHALL. Concurring opinion filed by Senior Circuit Judge SMITH.
David J. Romenesko and Steven P. Mullen (Romenesko) appeal the decision of the Board of Patent Appeals and Interferences (Board), dated September 9, 1996, affirming the final rejection of all claims in United States Patent Application No. 07/793,877, filed November 18, 1991. The claims were rejected as unpatentable under 35 U.S.C. § 103 due to obviousness. We affirm.
The Romenesko patent application is entitled "Poly(phenylene ether) Resin Modified with Silicone Rubber Powder." The background section of the application states that poly (phenylene ether) ("PPE") *fn1 plastic resins possess excellent physical properties, but exhibit poor processability due to their high viscosities in the melted state. According to Romenesko, processability can be improved by blending the resins with polystyrene (PS). *fn2 However, this comes at the cost of impairing physical properties. For example, there is a reduction in the temperature at which heat distortion occurs in the solid (unmelted) plastic.
Romenesko also observes in the background section of the application that the prior art, including United States Patent No. 3,824,208, issued to Link et al. (Link), discloses a mixture of polydiorganosiloxane gum ("POS") and silica filler to form a silicone rubber powder. Romenesko asserts, however, that there is no suggestion in the prior art to combine such a powder with PPE.
Romenesko's application discloses and claims a modification of PPE compositions that purportedly improves processability without diminishing physical properties. The modification is the combining of PPE with silicone rubber powder containing POS and silica filler. The application discloses that good flow characteristics at low temperatures (i.e., good processability) are obtained through this combination. It further discloses that physical properties such as impact resistance are surprisingly improved in the combination over the same properties in unmodified PPE, particularly when the silica filler is treated with a treating agent. *fn3 Finally, the application discloses the addition of an adhesion promoter, in what is characterized as a "highly preferred embodiment."
Claims 1 and 10 of the Romenesko patent application, which are representative of the claims on appeal, define a rubber composition consisting essentially of (i) PPE and (ii) silicone rubber powder. *fn4 The silicone rubber powder consists essentially of POS and silica filler. An adhesion promoter is optional. Thus, claims 1 and 10 define a rubber composition consisting essentially of PPE, POS, and silica filler, with the latter two ingredients being introduced together as a powder.
The Board affirmed the rejection of claims 1 and 10 as unpatentable over United States Patent No. 3,373,479, issued to Haaf (Haaf), in view of Link. The Board found that Haaf discloses compositions comprising PPE, POS, and other optional components, such as PS and/or silica filler. *fn5 The Board also found that Link discloses a process for producing powder mixtures of POS and silica filler. The Board concluded that a person having ordinary skill in the art, armed with these disclosures, would have found it obvious to disperse the powder mixtures of Link in the composition of Haaf.
In reaching its decision, the Board rejected Romenesko's argument that the claim language "consisting essentially of" excludes the optional PS of Haaf. It also rejected Romenesko's reliance on data in the specification as evidence of unexpected results to rebut the prima facie case of obviousness. The Board stated that the specification data failed to represent the closest prior art, namely, Haaf's disclosure of a composition comprising PPE, POS, and silica ...