Appeal No. 95-3759
Application 08/145,118
analyzed in light of appellant’s specification and the prior art. Accordingly, for the foregoing reasons,
we find that the examiner’s rejection of claim 1 under the second paragraph of 35 U.S.C. § 112 lacks
merit.
To make out a prima facie case of obviousness, the examiner must establish that a person
having ordinary skill in the art would have been led to remove fine particles and debris after the initial
blending step by a showing of facts or scientific reasoning flowing from the teachings of the prior art.
See generally In re Napier, 55 F.3d 610, 613, 34 USPQ2d 1782, 1784-85 (Fed. Cir. 1995); In re
Shetty, 566 F.2d 81, 86, 195 USPQ 753, 756-57 (CCPA 1977); Ex parte Levy, 17 USPQ2d 1461,
1462-1464 (Bd. Pat. App. & Int. 1990), and cases cited therein. The examiner has admitted that
Laing does not teach or suggest a step of separating coarse particles and fine particles debris after the
initial blending step. However, the examiner concludes that “[i]t would have been obvious to one
having ordinary skill in the art at the time the invention was made to remove fine particles and debris
by classifying the particles after the blending step to obtain the desired particle size and to divide out
smaller toner particles as a result of the blending step because Laing et al. teaches [sic, teach] a
desired range for the toner particles that is needed” (answer: p.3).
While Laing employs toner particles classified by particle size in his blending process, the
examiner’s conclusion of obviousness lacks an analysis of Laing and an explanation of why a person
having ordinary skill in the art would have been led or motivated to retain the desired particle sizes
disclosed by Laing and to remove fine particles and debris specifically after the initial blending step.
At column 7, line 59 to column 8, line 32, Laing discloses that
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