Appeal No. 1997-3874
Application 08/446,295
that the prior art could be modified such that appellant’s
process is carried out is not a sufficient basis for a prima
facie case of obviousness. See In re Brouwer, 77 F.3d 422,
425, 37 USPQ2d 1663, 1666 (Fed. Cir. 1996); In re Ochiai, 71
F.3d 1565, 1570, 37 USPQ2d 1127, 1131 (Fed. Cir. 1995).
The examiner has not explained why the applied references
themselves would have motivated one of ordinary skill in the
art to substitute Taillie’s toner for Rausing’s adhesive. The
examiner has merely provided a conclusional statement that one
of ordinary skill in the art would have substituted one known
thermoplastic adhesive for another, without addressing whether
such a person would have considered a toner to be desirable
and suitable in Rausing’s method. Also, the examiner has not
explained why one of ordinary skill in the art would have
considered the undercoat materials of Schoder or Suzuki to be
desirable for holding the particles to the surface in
Taillie’s method and would have been effective for doing so.
The record indicates that the motivation relied upon by the
examiner for combining the teachings of the references comes
solely from the description of the appellant’s invention in
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