Ex Parte Ito et al - Page 5




                 Appeal No. 2004-2008                                                                              
                 Application No. 09/955,030                                                                        
                        Bergmann discloses a process for producing doped tin oxides that                           
                 have desirable transparency, electrical conductivity and antistatic                               
                 characteristics.  (Col. 1, ll. 57-62).  Bergmann discloses “[t]hin films or                       
                 coatings containing electroconductive powders can also be used within                             
                 polymer films or fibers, magnetic recording tapes, on work surfaces and in                        
                 paints to impart electroconductive properties”.  (Col. 2, ll. 20-24).                             
                 Bergmann does not disclose that the electroconductive powders can be                              
                 used as a resistivity controlling agent.                                                          
                        We recognize that the Examiner asserts environmental benefits can                          
                 be obtained by doping tin oxide with tantalum rather than antimony                                
                 containing tin oxide.  However, there is no indication that the specially                         
                 formed Ta-doped tin oxide disclosed in Bergmann could have been                                   
                 surface treated as disclosed in Rokutanzono.  (See column 2).  Further,                           
                 there is no indication what effects the specially formed Ta-doped tin oxide                       
                 disclosed in Bergmann would have on the other properties of the                                   
                 protective layer of Rokutanzono.  Thus, there is insufficient evidence to                         
                 establish that the Ta-doped tin oxide disclosed in Bergmann would have                            
                 been suitable for use as a resistivity controlling agent in the surface layer of                  
                 the photosensitive member of Rokutanzono.                                                         


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