Appeal No. 1998-0546
Application No. 08/560,507
minimization of electric field 17, is not the same as the
problem addressed by appellants, i.e., reducing static
electricity. See In re Dillon, 919 F.2d 688, 692, 16 USPQ2d
1897, 1901 (Fed. Cir. 1990) (en banc) (the prior art need not
suggest a solution to the particular problem addressed by the
applicant). 5
The examiner's reliance on Murata as evidence that it
would have been obvious for the carbon dopant to be present in
the weight of approximately 15 to 20% is unnecessary, because
this limitation is inherently satisfied when Yoshikawa's
housing is made of carbon-doped polyethylene or polypropylene
4 8
having a volume resistivity in the range of 10 to 10 ohm-cms.
This inherent relationship between resistivity and doping
weight is described in appellants' specification, which
explains (at 7, lines 23-29) that in carbon-doped polyethylene
or polypropylene having a volume resistivity in the range of
5If instead of relying on Yoshikawa the examiner
had relied on the admitted prior-art bottle described in
appellants' specification and its admittedly known static
electricity problem (Spec. at 1, line 33 to p. 2, line 12),
Hasumi would be suggesting a solution to the same static
problem faced by appellants.
-8-
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