Appeal No. 94-3960
Application 07/997,489
powder cloud in the development zone. See specification, page
2. In other words, this donor roll must be useful for
electrophotographic printing or copying apparatuses. See
specification, page 1.
Claims 1 through 24 stand rejected under 35 U.S.C. § 103
as unpatentable over the combined teachings of the following
references : 2
Babu et al (Babu) 4,718,972 Jan. 12,
1988
Akahoshi et al (Akahoshi) 4,876,177 Oct. 24,
1989
Greene et al (Greene) 5,171,608 Dec. 15,
1992
According to the examiner, the references relied upon
disclose "the same sequence of steps" as claimed except for
using a cylindrical substrate in those steps. See Answer,
page 6. In so stating, the examiner fa
iled to take into account the preambular limitation "a donor
roll". See, e.g., Corning Glass Works v. Sumitomo Elec.
U.S.A., 868 F.2d 1251, 1257, 9 USPQ2d 1962, 1966 (Fed. Cir.
2The examiner relies on the following new reference to
further explain his position:
Yuh et al (Yuh) 5,063,125 Nov. 5, 1991
3
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