Appeal No. 2004-0375
Application 09/841,926
silicone rubber and the polyurethane (col. 3, lines 9-27). It is
undisputed that Ishii would have fairly suggested, to one of
ordinary skill in the art, including a coupling layer between
Takagi’s silicon rubber elastic layer and high resistivity
surface layer made from urea resin or melamine resin to obtain
improved adhesion between these layers.
We therefore conclude that the combined disclosures of
Takagi and Ishii would have rendered the roller claimed in the
appellants’ claim 1 prima facie obvious to one of ordinary skill
in the art.
The appellants argue that polyurethane, but not silicone
rubber, is among Takagi’s five preferred elastic layer materials
(col. 4, lines 16-19), and that polyurethane is Takagi’s only
exemplified elastic layer material (brief, pages 4-5; reply
brief, page 2). This argument is not well taken because Takagi
is not limited to the preferred materials or the examples. See
In re Fracalossi, 681 F.2d 792, 794 n.1, 215 USPQ 569, 570 n.1
(CCPA 1982); In re Kohler, 475 F.2d 651, 653, 177 USPQ 399, 400
(CCPA 1973).
4
Page: Previous 1 2 3 4 5 6 7 8 9 Next
Last modified: November 3, 2007