Appeal No. 2004-0375
Application 09/841,926
monochromatic and has excellent repeatability of characters, it
has the undesirable characteristics pointed out by the appellants
(col. 12, lines 47-52).
The appellants argue that Takagi’s ionically conductive
material is necessary for the invention and cannot be removed
(brief, page 5; reply brief, page 4). We are not convinced by
this argument because in the appellants’ claim 1, “elastic layer
made of silicone rubber comprising carbon black” encompasses an
elastic layer containing other components such as an ionically
conductive material. See In re Baxter, 656 F.2d 679, 686, 210
USPQ 795, 802 (CCPA 1981).
The appellants argue that Takagi’s silicone rubber elastic
layer material is one of 4,096 possible disclosed materials or
their mixtures, and that Takagi does not provide any motivation
for selecting silicone rubber from among them (reply brief,
page 2). This argument is not persuasive because the fact that
many are disclosed would not have made any of them less obvious,
particularly where, as here, the material recited in the
appellants’ claim is used for the identical purpose taught by the
reference. See Merck & Co. v. Biocraft Labs., 874 F.2d 804, 807,
10 USPQ2d 1843, 1846 (Fed. Cir.), cert. denied, 493 U.S. 975
(1989).
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