Appeal No. 1998-2475 Page 9
Application No. 08/505,020
missing descriptive matter is necessarily present in the
reference. Inherency may not be established by mere
probabilities or possibilities. See In re Robertson, 169 F.3d
743,744-45, 49 USPQ2d 1949, 1950-51 (Fed. Cir. 1999). As the
record does not reflect that the electrical conductivity of
the carbon black pigment is higher than the electrical
conductivity of the conductive liquid, we therefore conclude
that the examiner has failed to establish a prima facie case
of obviousness with respect to claims 10 and 12. Accordingly,
the rejection of claims 10 and 12 under 35 U.S.C. § 103(a) is
therefore reversed.
We turn next to the rejection of dependent claims 13-15
under 35 U.S.C. § 103 as unpatentable over Sakai in view of
Kobayashi, and further in view of Conta. From our review of
Conta, we find that Conta does not overcome the basic
deficiencies of Sakai and Kobayashi. Accordingly, the
rejection of claims 13-15 under 35 U.S.C. § 103(a) is
reversed.
We now turn to the rejection of claim 16 under 35 U.S.C.
§ 103(a) as unpatentable over Kobayashi. As claim 16 also
recites "said conducting material having an electrical
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