Ex parte VALSECCHI et al. - Page 5




          Appeal No. 1996-1864                                                        
          Application No. 08/330,349                                                  


          oxide) to improve adhesion or other properties.  However, they              
          neither teach nor suggest employing a combination of a                      
          sulfopolyester and an epoxy compound in the anti-static layer               
          of Anderson.  Although the Valsecchi reference relied upon by               
          the examiner employs an epoxy compound, Valsecchi uses the                  
          epoxy compound for rendering a sulfonated polymer in the anti-              
          static layer insoluble through some unknown reaction between                
          the epoxy compound and the sulfonated polymer.  See column 7,               
          line 59 to column 8, line 10.  The examiner has supplied no                 
          evidence to support a conclusion that the desired unknown                   
          reaction described in Valsecchi is not adversely affected in                
          the presence of the vanadium oxide described in either                      
          Anderson, Chang, Buchanan or Guestaux.  Nor has the examiner                
          provided sufficient evidence to conclude that one of ordinary               
          skill in the art would have had a reasonable expectation that               
          the modified sulfopolyester taught in Valsecchi                             
          (sulfopolyester modified by an epoxy compound) would                        
          necessarily have the desirable properties of a sulfopolyester,              
          such as the improved adhesion suggested by Chang.  In                       
          addition, the examiner has not provided any explanation as to               
          why it would have been obvious to employ the claimed adhesive-              
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