Ex Parte MURAOKA et al - Page 6


         Appeal No. 2001-0080                                                       
         Application No. 08/577,217                                                 

         in a range of about 150 to about 210, and "a medium particle               
         size of an average" of about 20 to about 50 nm.  (Column 1,                
         lines 50-63.)                                                              
              Bergh describes the use of silica having an ultimate                  
         particle size of 50 to 10,000 angstroms and a BET surface area,            
         as measured using nitrogen gas, of about 100 to about 200 in               
         sulfur vulcanized tread compositions.  (Column 2, line 49 to               
         column 3, line 4; column 4, lines 24-32.)                                  
              Aminabhavi teaches that the electrical resistivity of                 
         rubbers is known to be largely influenced by the type and amount           
         of carbon black in addition to its degree of dispersion in the             
         rubber matrix.  According to the examiner (examiner's answer,              
         page 6), this reference "clearly shows that the ordinary artisan           
         understands the impact of particle size and 'structure' on                 
         resistivity/conductivity of rubber and particularly that high              
         conductivity is achieved by selecting small particle size and              
         'high structure' carbon blacks..."  (Footnote omitted.)                    
              In comparing the disclosure of Hanson, the principal prior            
         art reference (examiner's answer, page 6, statement of                     
         rejection), to the subject matter of appealed claim 1, we find             
         that Hanson differs in many respects.  For one, Hanson does not            
         teach any average particle size for the carbon black.  Nor does            
         Hanson teach any particular DBP oil absorption value for the               

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