Appeal No. 2005-2639
Application 08/855,905
III declaration, and (2) that we misinterpreted the Yamanaka III declaration on other grounds
(id., pages 2 and 3-4).
Appellants submit, with respect to their first contention, that we did not address the issue,
raised in section II of the reply brief (page 2), that the examiner’s statement that the comparison
presented in the Yamanaka III declaration “does not agree in scope with the present claims
because the claims do not require a 3-layered film” (answer, page 15) is contrary to claim 47
which specifies such a structure (request, page 2). Appellants further submit that the above
statement of the examiner was preceded by the statement with respect to the evidence in the
Yamanaka III declaration, that “[t]he inventive paper shows improvement with regard to
antistatic properties and printability” (answer, page 15), which finding “cannot be dismissed
since the experiments performed in this declaration agree with the scope of the invention,
namely the three-layered film of Claim 47” (request, page 2; original emphasis deleted).
Appellants submit, with respect to their second contention, that we found “significant
basic differences between [Takashi Example 12] and [Yamanaka III declaration] Experiments
1-3[,] . . . [i]n particular” our finding that “[t]he base layer of Takashi Example 12 contains an
antistatic agent which was omitted in declaration III Examples 1-3, and the antistatic agent of the
paper-like layer of Experiment 1 has been changed to a different type than used in Takashi
Example 12” (request, page 3, quoting original decision, page 20). Appellants point out that “a
review of table I (b) at columns 9-10 of [Takashi], which describes the base layer component of
Experiment 12, does not, in fact, include an anti-static agent,” and argue that Experiments 1-3 of
Yamanaka III declaration are “in fact is consistent with Experiment 12” (request, page 3;
original emphasis deleted). Appellants further point out that “the Yamanaka III declaration
clearly states that the reason low molecular weight anti-static RESISTAT PE 132 of [Takashi]
was not used in the numerated experiments was because it was no longer available” and a
different antistatic was used (request, page 3; original emphasis deleted).
Our consideration of the Yamanaka III declaration did not turn solely on either of the
grounds raised by appellants in their request (original decision, pages 20-21). Indeed, we found
significant basic differences between the ingredients and processing conditions used in
the base and paper-like layers of the synthetic papers of Experiments 1-3 (see Takashi
Tables I(b), II(b), III and IV, and declaration III Tables 1 and 2) and the synthetic
paper of “Example 1 of the Present Application” in Experiment 4 (see specification
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