Ex parte KODAMA et al. - Page 8




          Appeal No. 95-4857                                                          
          Application 08/101,000                                                      



          contain a high loading of carbon black particles to prevent                 
          buildup of an electrostatic charge (col. 6, lines 9 to 23).                 
          This disclosure would have motivated one of ordinary skill in               
          the art to provide carbon black particles in the fluorine-                  
          containing resin inner layer of Igarashi for the same purpose.              
          The resistivity and concentration of additive recited in                    
          claims 5  and 6 would have been obvious matters of choice,                  
          selected to achieve the desirable result taught by Press.                   
          Conclusion                                                                  
                    The examiner's decision to reject claims 1 and 4 to               
          9 is reversed.  Claims 1 and 4 to 9 are rejected pursuant to                
          37 CFR § 1.196(b).                                                          
                    This decision contains new grounds of rejection                   
          pursuant to 37 CFR § 1.196(b) (amended effective Dec. 1, 1997,              
          by final rule notice, 62 Fed. Reg. 53,131, 53,197 (Oct. 10,                 
          1997),                                                                      
          1203 Off. Gaz. Pat. and Trademark Office 63, 122 (Oct. 21,                  
          1997)).  37 CFR § 1.196(b) provides that "[a] new ground of                 
          rejection shall not be considered final for purposes of judi-               
          cial review."                                                               

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