Ex parte YU et al. - Page 4




          Appeal No. 95-3749                                                          
          Application No. 07/953,619                                                  


          insoluble to methylene chloride.  In addition, the substrate must           
          have specific Tg and a specific linear thermal contraction                  
          coefficient relationship with a charge transport layer.  See                
          both claims 21 and 26.                                                      
               The examiner has rejected claims 2, 3, 6 through 13, 21 and            
          25 under 35 U.S.C. § 103 as unpatentable over the combined                  
          teachings of Yu’481 and Takano.   The examiner’s rejection is               
          predicated on the contention that:                                          
                         It would have been obvious to one having                     
                    ordinary skill in the are at the time the                         
                    invention was made to substitute the substrate                    
                    having an undercoat layer comprising nylon taught                 
                    be Takano et al. for the substrate of Yu because                  
                    Takano et al. states that providing the substrate                 
                    with an undercoat layer prevents any reduction of                 
                    electrostatic charging property and improves the                  
                    adhesive property.                                                
          In so contending, the examiner appears to take the position that            
          a substrate having an undercoat layer of Takano meets the claimed           
          substrate.  We cannot subscribe to the examiner’s position.                 
               Yu’481 describes an electrophotographic imaging member which           
          can be used in an electrostatographic process.  See column 1,               
          lines 5-7.  The electrophotographic imaging member comprises,               
          inter alia, a substrate  and a charge transport layer applied by            
          solution coating in methylene chloride.  See example 1 at columns           
          14 and 15.  The difference in thermal contraction coefficient               

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