Appeal No. 95-4118
Application 07/600,799
7-9). Appellants, in the principal brief, point out that Tennent does not disclose combining fibrous,
carbonaceous materials with light colored pigments to form coatings and that Tennent uses said fibrous
materials as reinforcement in composites used as structural members, citing three passages in the
reference, in contending that motivation has not been established on the record to combine the fibrous,
carbonaceous materials of the reference with the other ingredients as theorized by the examiner, which
is tantamount to hindsight (pages 3-6).
The examiner stated in the answer that appellants had not challenged his findings with respect to
that which is notoriously known in the art (page 10). However, in response to appellants’ argument in
the reply brief that there is “no reference in the case that suggests that carbon fibers have greater
conductivity than carbon blacks, nor that carbon fibers provide higher conductivity with lesser amounts
than carbon blacks” (page 5), the examiner reversed his position in the first supplemental answer (page
4) and relied on Hess for support for his contentions of notorious knowledge in the art. We find that
the examiner has relied on Hess in this instance in the same manner as in the ground of rejection in
which this reference is combined with Tennent. In further support of his position, the examiner cited
Friend for the teaching that “less carbon fibers can be used to achieve the same level of conductivity as
metal powders, and that lighter colored inks can be made while maintaining the electrical conductivity
by using carbon fibers in place of graphite (metal) powder;” and Knobel et al. as showing the “notoriety
of the idea that graphite fibers can be added to significantly lower volume concentrations and still give
bulk conductive properties to thermoplastics and that use of carbon fibers allows for translucency of
conductive coatings versus the black opaque coating provided by use of carbon black as a conductive
filler” (first supplemental answer, pages 4-5). 6
It is inescapable that the examiner relies on each of Hess, Friend and Knobel et al. to provide
the evidentiary underpinnings for the thrust of his rejection based on Tennent alone, because his
discussion of each of these references far exceeds the challenge with respect to conductivity stated by
6Friend was made of record by appellants in their information disclosure statement filed June 25, 1992
(Paper No. 6) and Knobel et al. was made of record in the final rejection of August 13, 1992 (Paper
No. 7).
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