Ex parte CARSWELL et al. - Page 2


                 Appeal No. 1998-2733                                                                                                              
                 Application 08/718,613                                                                                                            

                         (a)  the polymer is efficiently electrostatically painted, and                                                            
                         (b)  the polymer is not conductive but for the inclusion of the non-volatile metal salt conductivity                      
                 inducing materials in the polymer.                                                                                                
                         The appealed claims, as represented by claim 10, are drawn to a painted article which                                     
                 comprises at least a layer of electrostatically applied paint over a layer of a polymer prepared from a                           
                 polymer formulation including materials which include or form urea groups, urethane groups or mixtures                            
                 thereof and a non-volatile metal salt conductivity inducing material, wherein the polymer formed from the                         
                 formulation is not conductive but for the inclusion of the non-volatile metal salt conductivity inducing                          
                 materials.  According to appellants, and as stated in the claim, the polymer prepared according to the                            
                 claim can be efficiently painted because of the presence of the non-volatile metal salt conductivity                              
                 inducing material therein.                                                                                                        
                         The references relied on by the examiner are:                                                                             
                 Knobel et al. (Knobel)                             4,806,571                                 Feb. 21, 1989                      
                 Pierce                                            5,188,783                                 Feb, 23, 1993                      

                 Ukai et al. (Ukai)1                                2-166158                                  Jun. 26, 1990                      
                         (Published Japanese Patent Application)                                                                                   
                         The examiner has advanced the following grounds of rejection on appeal:2,3                                                
                 claims 10 through 18 and 20 stand rejected under 35 U.S.C. § 103(a) as being unpatentable over  Ukai                              
                 taken in view of Knobel; and                                                                                                      
                 claims 10 through 13 and 15 through 21 stand rejected under 35 U.S.C. § 103(a) as being                                           
                 unpatentable over Pierce.                                                                                                         
                         Appellants state in their brief (page 3) that they “group Claims 10-21 together as one group.”                            
                 Thus, we decide this appeal based on appealed claim 10 with respect to each ground of rejection.  37                              
                 CFR § 1.192(c)(7) (1997).                                                                                                         
                                                                                                                                                   
                 1  We refer in our opinion to the translation of Ukai prepared for the USPTO by Diplomatic Language                               
                 Services, Inc. in 2001. A copy of the translation is attached to this decision.                                                   
                 2  The examiner states in the answer that the two grounds of rejection are set forth in the Office action of                      
                 June 27, 1997 (Paper No. 13; pages 5-9).                                                                                          
                 3  The examiner has apparently dropped the grounds of rejection under  35 U.S.C. § 112, first and                                 
                 second paragraphs, set forth in Paper No. 13 (pages 3-4) because no mention is made thereof in the                                
                 answer.                                                                                                                           

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