Appeal No. 2001-1568
Application 09/099,078
of 7.2 lines/mm, and comparative Example 3 achieves a resolution
of 6.4 lines/mm. Also, Example 1 achieves an image density of
1.40, whereas comparative Example 2 achieves an image density of
1.28, and comparative Example 3 achieves an image density of
1.25.
Appellants characterize the aforementioned results on page 7
of the Brief. Here, appellants indicate that from the comparison
of the results of Example 1 with the results of Comparative
Example 2 , it is clear that the present process affords
surprisingly superior uniformity image density and resolution as
compared to the process of Yoshino, and thus one skilled in the
art would have no motivation to expect such improvements from
Yoshino.
The examiner, meanwhile, states, on page 14 of the answer,
that appellants fail to rebut the obviousness rejections because
appellants fail to make a comparison between their invention and
the image forming process of Yoshino in combination with the
intermediate transfer step of Kusaba. Hence, the examiner is
requiring that appellants compare their invention with their
invention (assuming that Yoshino view Kusaba set forth
appellants’ invention). This is in error because appellants’
burden is to compare their invention with the closest prior art.
Id. Because the examiner has not correctly or convincingly
explained that appellants’ rebuttal evidence fails to rebut a
prima facie case, we cannot sustain the examiner’s rejections.
Therefore, the rejections of record are reversed.
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