Ex Parte KIKUCHI et al - Page 10
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Appeal No. 2003-2020
Application No. 08/944,208
claim 15 is enabled. Third, a factual inquiry whether to modify
a reference must be based on objective evidence of record, not
merely conclusionary statements of the examiner. See In re Lee,
277 F.3d 1338, 1343, 61 USPQ2d 1430, 1433 (Fed. Cir. 2002). The
examiner merely stated that polyether ester-amide is one of many
obvious alternatives for an antistatic polymer, citing no
evidence as support. Therefore, the examiner's statement is the
very type precluded by the court. Consequently, we cannot
sustain the obviousness rejection of claim 15.
CONCLUSION
The decision of the examiner rejecting claim 15 under
35 U.S.C. § 112, first paragraph, is reversed. The decision of
the examiner rejecting claims 3, 4, and 9 through 15 under 35
U.S.C. § 103 is affirmed as to claims 3, 4, and 9 through 14, but
reversed as to claim 15.
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