Appeal No. 1997-0421 Page 4
Application No. 08/304,485
associated therewith are directed to "... dry state anti-
static layers consisting of colloidal silica" (answer, page
3). The examiner assumes, however, that an ordinarily skilled
artisan "... might expect... " gelatin, a hydrophilic colloid,
to function in "... a similar manner..." to colloidal silica
(answer, page 3).
It is the examiner's position that "[b]ased on this
assumption, one of ordinary skill in the requisite art would
have found it prima facie obvious to utilize a synthetic clay
in the anti-static layer of Chen et al. with a reasonable
expectation of achieving the same beneficial results as taught
by Timmerman et al., those being a reduction in micro-cracking
in the anti-static layer to help reduce the amount of lateral
conductivity in the anti-static layer ...." (answer, page 4).
The difficulty we have with the examiner's position is
that the proposed modification of Chen is premised on the
examiner's speculation regarding what one of ordinary skill in
the art may contemplate happening when using a synthetic clay
in combination with the hydrophilic binder in the antistatic
layer of Chen. In this regard, it is well settled that a
legal conclusion of obviousness must be supported by facts,
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