Ex Parte Mosher et al - Page 4




                Appeal No. 2005-1451                                                                                  Page 4                   
                Application No. 09/833,546                                                                                                     


                soluble polyamides in the same field of endeavor as Parker, namely, for the production of                                      
                flexible electrophotographic imaging members (Answer, pp. 3-4).  But the fact that Fuller is                                   
                directed to forming such imaging members does not provide the required factual basis to support                                
                the Examiner’s conclusion of obviousness.  This is because the teachings in Parker and Fuller                                  
                relied upon by the Examiner are not sufficiently related such that a suggestion to make the                                    
                modification advanced by the Examiner would have been apparent to one of ordinary skill in the                                 
                art.  In Parker, polyamide is described as suitable as a seam strength enhancing material (Parker,                             
                col. 9, ll. 9, ll. 35-38).  The polyamide, in strip form, is placed in contact with the puzzle cut                             
                seam and melted into the seam with heat and pressure (Example 1, col. 9, ll. 44-60).  The                                      
                purpose of the strength enhancing material is to fill the kerr spaces between the two sides of the                             
                puzzle cut seam member to form a bonded joint (col. 9, ll. 5-41) as shown in Figure 11.  In                                    
                contrast, the alcohol-soluble polyamide of Fuller is applied as an overcoating layer atop a multi-                             
                layer imaging member.  The overcoating layer is applied to protect an underlying                                               
                photoconductive layer (Fuller, col. 3, ll. 1-4).  In this application, the overcoat layer serves a                             
                different purpose and solves a different problem than the heat and/or pressure bonded strip of                                 
                strength enhancing material of Parker.  The Examiner has not provided sufficient evidence                                      
                indicating that one of ordinary skill in the art would have understood the alcohol-soluble                                     
                polyamide of Fuller as having the properties necessary to serve as the strength enhancing                                      
                material of Parker.                                                                                                            









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