Ex parte HENNEMANN et al. - Page 9




          Appeal No. 1998-3320                                                        
          Application 08/417,017                                                      


          Baigrie’s other materials for the copper or the silver                      
          material in Tsunaga’s composition, or to add one of these                   
          other materials to Tsunaga’s composition.  Consequently, we                 
          reverse the rejection of claim 15.                                          
                                Rejection of claim 18                                 
               Claim 18 requires that a composition containing the                    
          surface modified pigment includes not more than 40 wt% of the               
          surface modified pigment.  Tsunaga teaches that the proportion              
          of the conductive powder in an electrically conductive                      
          composition “may be chosen from [a] rather broad range in                   
          accordance with the use of the electrically conductive                      
          composition”, and preferably is 100 parts by weight of                      
          electrically conductive powder to 5-50 parts by weight, more                
          preferably 25 to 40 parts by weight, of the solid content of                
          the binder resin (col. 4, lines 1-10).  Thus, the lowest                    
          amount of electrically conductive powder preferred by Tsunaga               
          is 100 parts by weight of powder per 50 parts by weight of                  
          solids in the binder resin, i.e., the powder is 67 wt% of the               
          composition based upon the powder and the solids in the                     
          binder.  The appellants’ claim 18, however, encompasses                     


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