Appeal No. 96-2878
Application 08/313,631
regarding the use of magnetic material in Schnall. It appears that the Examiner has used hindsight to
modify Schnall to use magnetic toner in order to provide the reason for substiting a magnetic feeding
arrangement. For these reasons, we will not sustain the rejection of claims 1 and 19. The remaining
claims on appeal also contain the above limitations discussed with regard to claims 1 and 19 and
thereby, we will not sustain the rejection as to these claims.
In addition, we note that the Examiner states on page 5 of the answer:
The manner, however, in which the magnetic toner is stored in the chamber is
considered to be the desired function and thus entitled to no patentable weight.
Without more, it is unclear what claim language the Examiner has in mind. Appellants have
argued that the references fail to teach or suggest “increasing storage capacity”, “under utilized areas”
and “tightly packed thereby”. After a thorough review of Schnall and Yamashita, we also find no
mention of these terms, expressly or implicitly. Claims 1 and 19 recite these terms, at least some of
which go beyond a “desired function” because they have structure to perform the function and are
entitled to patentable weight. We would also not sustain the rejection of claims 1 and 19, and thereby
the remaining claims, since the Examiner is silent on these claim terms.
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