Appeal No. 2001-1568
Application 09/099,078
Beginning on page 6 of the brief, appellants refer to (1)
Table 3 on page 22 of the specification, and (2) the Declaration
of July 10, 2000. Upon our review of this evidence, we conclude
that we agree with appellants’ assessment of this evidence as set
forth on pages 7-8 of the brief. We further agree with
appellants’ comments regarding the examiner’s position taken
concerning the Declaration of July 10, 2000. That is, we agree
that appellants’ burden is not to compare their invention with
the invention of Yoshino in view of Kusaba; rather appellants’
burden is to compare their invention with the closest prior art.
In re Merchant, 575 F.2d 865, 869, 197 USPQ 785, 788 (CCPA 1978);
In re Blondel, 499 F.2d 1311, 1317, 182 USPQ 294, 298
(CCPA 1974); In re Swentzel, 219 F.2d 216, 220, 104 USPQ 343, 346
(CCPA 1955).
Table 3 on page 22 of appellants’ specification is also set
forth in the Declaration of July 10, 2000. In Table 3, Example I
is representative of appellants’ claimed invention. The
procedure utilized in Example 1 is set forth on page 19 of the
specification. This procedure involves the steps recited in
appellants’ claim 1. That is, the image forming device as shown
in appellants’ Figure 1 is used and a liquid developer is used to
contact the surface to develop a latent image. The intermediate
transfer member 9 of Figure 1 is also used.
On page 7 of the Declaration of July 10, 2000, appellants
indicate that comparative Example 2 is representative of Yoshino.
Comparative Example 2 omits the use of an intermediate transfer
member. Comparative Example 3 omits both the intermediate
transfer member and the voltage impressing roller.
Table 3 indicates that Example 1 achieves a resolution of
8.2 lines/mm, whereas comparative Example 2 achieves a resolution
3
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