Appeal No. 2006-2693 Page 9
Application No. 09/000/330
copolymers in this group of 18 examples of binders to arrive at the applicant’s claimed
invention. While there are alpha-olefin based copolymers (ethylene-based copolymers)
within this list[,] there is absolutely no indication to use a copolymer as defined in the
instant claims. The examples of ethylene-based copolymers given in Yoshikawa are
totally different (col. 4, lines 25-26) from the binder used in the instant claims. Again,
reference to ‘alicyclic compound having one double bond’ on col. 4, line 30 cannot
overcome this deficiency.” Appeal Brief, page 9.
Although Yoshikawa does not disclose a copolymer of an alpha-olefin with an
alicyclic compound having one double bond, the examiner is not relying on Yoshikawa
for this feature. Instead, the examiner states that “Minami discloses a random
copolymer resin having a cyclic structure that is within the compositional limitations
recited in the instant claims.” Examiner’s Answer, page 8. In addition, for the reasons
discussed above, we conclude that one of ordinary skill in the art would have been
motivated to include the copolymer of Minami in the developing agent of Yoshikawa.
In addition, Appellants argue that “[o]ut of the forty different fields [of use]
disclosed [in Minami,] only one field is drawn to electrophotographic toners. . . . There
is no disclosure in Minami on how to make electrophotographic toners. There is no
motivation to combine Minami with Yoshikawa.” Appeal Brief, page 12. Instead,
Appellants argue that “[t]he Examiner’s argument is clearly based on hindsight
reconstruction.” Id., at page 13.
As pointed out by Appellants, the mere fact that the prior art may be modified
does not make the modification and therefore the claimed invention obvious. “Rather,
to establish obviousness based on a combination of the elements disclosed in the prior
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