Ex parte YONEKAWA et al. - Page 7




          Appeal No. 1998-0126                                                        
          Application 08/272,700                                                      


          corona discharge device having sharp discharge ends, and that               
          Myochin teaches the use of AC voltages in a corona discharge                
          device.  At page 7 of the answer the Examiner states, “The                  
          examiner contends that MYOCHIN is directly applicable to                    
          COMPTON because both are concerned with object charging.”  At               
          page 12 of the Answer the Examiner states “Had Compton used AC              
          or Myochin used a sharp end instead of a wire, then again                   
          anticipation would have been encountered.”                                  
                    We agree with Appellants; the Examiner seems to have              
          missed the “point”.  Myochin does not provide any indication                
          that other shapes of electrode ends would be applicable to                  
          it’s teachings.  Likewise, Compton provides no indication of                
          other suitable voltages, e.g., voltages other than DC.  The                 
          Examiner’s common thread of “object charging” falls short of                
          providing motivation to combine the AC voltage teaching of                  
          Myochin with the sharp discharge ends of Compton.  We agree                 
          with the Examiner that Appellants’ arguments regarding the                  
          question of ozone generation or decomposition is not recited                
          in claim 1 and thus is irrelevant to the claim limitations.                 
          Nonetheless, the question of ozone effects could provide the                


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