Appeal No. 2001-0080
Application No. 08/577,217
carbon black. Also, Hanson does not teach the recited
conductive film thickness and width. Further, Hanson does not
teach a rubber composition having the recited components in the
recited amounts.
In spite of the numerous differences between Hanson and the
invention recited in appealed claim 1, the examiner held
(examiner's answer, pages 7-8):
[T]he ordinary artisan...would have found it to have
been prima facie obvious to include a thin conductive
layer along at least the side edges of the tread
surface of any relatively non-conductive tread rubber
to avoid static accumulation, this being known to be
particularly important for silica-rich treads in light
of the teachings of Teeple at al. Only the expected
results would be achieved. [Footnote omitted.]
The examiner further stated (id. at page 8): "The remaining
features of the claims represent result-effective variables
whose claimed values represent mere routine and obvious
optimizations of this basic concept leading to none but the
expected results."
We cannot agree with the examiner's analysis and
conclusion. The examiner has not pointed to any teaching,
suggestion, or motivation in the prior art that would have led
one of ordinary skill in the art to arbitrarily and selectively
combine Hanson with the other references such as Teeple, which
teaches a conductive discharge ring of undisclosed composition
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