Ex parte FREDERICK - Page 5




               Appeal No. 96-0298                                                                                                    
               Application 07/920,230                                                                                                

               or the use of a dye reagent to treat polystyrene for the purpose stated above by the examiner.  Young                 
               is specifically directed to suppressing the accumulation of electrostatic charges on polystyrene by                   
               incorporating  a copolymer of styrene and maleic anhydride.  The examiner has not explained how                       
               the suppression of electrostatic charges is related to triboelectric properties and how polystyrene is                
               related to fibers used in filter media.                                                                               
                       From these findings, the examiner concluded that “it would have been readily obvious to one                   
               of ordinary skill in the art to employ both permanent alteration of the filter fabric’s triboelectric value           
               and the use of a dye as a reagent in any one of the EPA, Frederick (A) and Frederick (B) fabric                       
               triboelectric value modification processes in order to facilitate accurate control of the fabric’s                    
               electrostatic properties as taught by Young et al.” (answer: pp. 4-5).  We are unable to agree with                   
               the examiner’s conclusion of obviousness.                                                                             
                       We find that the examiner’s rejection of claims 1-32 over the combined teachings of EPA,                      
               Frederick (A), Frederick (B) and Young lacks evidence and scientific reasoning as to why one of                       
               ordinary skill in the art would have been motivated to combine Young with the other references and                    
               arrive at the claimed subject matter when, inter alia, Young is not directed to altering triboelectric                
               values of polystyrene or directed to a fiber specifically useful for use in a filter medium or to any of              
               the fiber materials disclosed in EPA, Frederick (A) and Frederick (B).  The EPA, Frederick (A) and                    
               Frederick (B) references discloses may types of fibers which may be employed as a filter medium, but                  
               none of the fabrics disclosed contain polystyrene.                                                                    
                       Thus, we find that the examiner has not established a prima facie case of obviousness                         

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