Ex Parte KIKUCHI et al - Page 10




          Appeal No. 2003-2020                                                        
          Application No. 08/944,208                                                  


          claim 15 is enabled.  Third, a factual inquiry whether to modify            
          a reference must be based on objective evidence of record, not              
          merely conclusionary statements of the examiner.  See In re Lee,            
          277 F.3d 1338, 1343, 61 USPQ2d 1430, 1433 (Fed. Cir. 2002).  The            
          examiner merely stated that polyether ester-amide is one of many            
          obvious alternatives for an antistatic polymer, citing no                   
          evidence as support.  Therefore, the examiner's statement is the            
          very type precluded by the court.  Consequently, we cannot                  
          sustain the obviousness rejection of claim 15.                              


                                     CONCLUSION                                       
               The decision of the examiner rejecting claim 15 under                  
          35 U.S.C. § 112, first paragraph, is reversed.  The decision of             
          the examiner rejecting claims 3, 4, and 9 through 15 under 35               
          U.S.C. § 103 is affirmed as to claims 3, 4, and 9 through 14, but           
          reversed as to claim 15.                                                    













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