Appeal No. 2001-0080
Application No. 08/577,217
having a different set of characteristics. For example, the
examiner would have us believe that Hanson's conductive film
could be modified to have a thickness smaller than 0.04 to 0.10
inch. However, the examiner has not adequately explained why
one of ordinary skill in the art would have used a thickness
outside the range disclosed in Hanson, especially when the film
contains carbon black as taught in Hanson. In Hanson, where
carbon black is used as part of the conductive film, the
disclosed range of thicknesses is taught as "entirely
satisfactory." (Page 3, right column, lines 9-12.) Hence, one
of ordinary skill in the art would have no reason to optimize
outside Hanson's range when carbon black is used. While the
examiner alleges that Teeple teaches the here claimed film
thickness (examiner's answer, pages 9-10), the examiner glosses
over the fact (id. at page 8, footnote 4) that Teeple does not
disclose the composition of the discharge ring, much less a
discharge ring having carbon black as in Hanson.
Also, the examiner does not adequately explain why one of
ordinary skill in the art would have been led to combine Hanson
with Bergh, Krishnan, and Aminabhavi, which do not relate to
conductive thin films for tires. Again, it is our judgment that
the examiner has impermissibly used the appellants'
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