Appeal No. 1999-1942
Application 08/770,037
(Fed. Cir. 1992), citing In re Gordon, 733 F.2d 900, 902,
221 USPQ 1125, 1127 (Fed. Cir. 1984).
The arguments about "hydrated oxides" at EA7-9, RBr4-6
are based on a misunderstanding of Appellants' arguments by
the Examiner. Appellants contend that the alumina hydrate of
component (a) is not an oxide, which the Examiner mistakenly
interprets as an argument that Penneck does not teach an
oxide. Appellants never dispute that component (b) can be an
oxide. It does not appear that the Examiner contends that the
alumina hydrate of component (a) is the oxide, even though it
is a "hydrated oxide" because it is aluminum oxide bound to a
water molecule; if so, the Examiner would be in error because
the alumina hydrate is never referred to as an oxide. The
Examiner relies on component (b) as the oxide, which is
supported by the abstract and disclosure of Penneck. As we
have discussed, there is no motivation for adding the oxide
component (b) alone because it is not mainly responsible for
preventing tracking.
For these reasons, we conclude that the Examiner has
failed to establish a prima facie case of obviousness. The
rejection of claims 1-16 and 20 is reversed. Mitsui does not
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