Appeal No. 2004-0375
Application 09/841,926
The appellants argue that claim 1 requires a resin layer
formed on the entire outer circumference of the elastic layer
(reply brief, page 3). This feature is not required by the
appellants’ claim 1, but is disclosed by Takagi (col. 8, lines 9-
11).
The appellants argue that if there is motivation to include
carbon black in Takagi’s elastic layer, it would be in such
quantities to adjust resistivity without adversely affective
ionic conductivity (reply brief, page 4). This argument is not
persuasive even if it is correct because the appellants’ claim 1
does not require any particular amount of carbon black and,
therefore, encompasses the amount argued by the appellants.
For the above reasons we conclude that a prima facie case of
obviousness of the appellants’ claimed invention has been
established and has not been effectively rebutted by the
appellants.
DECISION
The rejection of claims 1 and 2 under 35 U.S.C. § 103 over
Takagi in view of Ishii is affirmed.
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