Ex parte KAMAJI et al. - Page 8




          Appeal No. 1996-3506                                                        
          Application 08/178,439                                                      

                         According to the subject matter of                           
               independent claim 11, the conductive regulating                        
               blade member (16c) and the conductive transfer                         
               roller member (20) are synergistically combined with                   
               each other.                                                            
                         This synergistic effect could not have been                  
               known by anyone without building the apparatus of                      
               the present invention and conducting experiments                       
               having the results as shown in the graphs of Figs. 6                   
               and 7 of this application.  (Brief-pages 6 and 7.)                     

                    Looking at Appellants’ Figure 6 we see that charge                
          injection (curve C) performs better than triboelectrification               
          (curve D).  Looking at Figure 7 we see that a conductive                    
          transfer roller (curve E) performs better than a corona                     
          discharger (curve F).  Each of the elements chosen by                       
          Appellants (charge injection and a conductive roller) provides              
          better results than those not chosen (triboelectrification and              
          corona discharge).  Thus, we see no synergistic effect in the               
          combination, only that which would be expected from the                     
          beneficial performance of each.  Since Appellants' claimed                  
          structure has been shown to be obvious by the combination of                
          Nishio and Hosoya, we would expect the same enhanced, but                   
          unclaimed, environmental performance.                                       





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