Appeal No. 1998-2475 Page 8
Application No. 08/505,020
reasoning to reasonably support the determination that the
allegedly inherent characteristic necessarily flows from the
teachings of the applied prior art. See Ex parte Levy, 17
USPQ2d 1461, 1464 (Bd. Patent App. & Int. 1990). The examiner
relies upon the disclosure in Kobayashi (col. 9, lines 17-32)
that carbon black is a preferred material because of its
"elevated infrared absorbing efficiency when infrared ray is
used as the source of thermal energy." The record reflects no
evidence or reasoning to establish that carbon black
pigmentation having an elevated absorbing efficiency in an
infrared ray environment would therefore have an electrical
conductivity higher than the electrical conductivity of the
conductive liquid. Neither Sakai nor Kobayashi discloses the
electrical conductivity of conductive liquid or conductive
particles. Additionally, we note that the electrical3
conductivity of carbon black can vary.
An element of a claim is not "inherent" in the disclosure
of prior art unless extrinsic evidence clearly shows that
3Kirk-Othmer Encyclopedia of Chemical Technology, vol.4,
pp 1063-1066, John Wiley & Sons, 1992. A copy of the cited pages accompanies
the decision.
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