Appeal No. 1996-3506
Application 08/178,439
It is the burden of the Examiner to establish why
one having ordinary skill in the art would have been led to
the claimed invention by the reasonable teachings or
suggestions found in the prior art, or by a reasonable
inference to the artisan contained in such teachings or
suggestions. In re Sernaker, 702 F.2d 989, 995, 217 USPQ 1, 6
(Fed. Cir. 1983).
With regard to the rejection of the Group I claims,
11 through 14, we will consider claim 11 as the representative
claim.
Appellants argue throughout their brief that the
claimed invention provides a quality image “in an environment
of high temperature and high air moisture content” (e.g.
brief-page 6). This argument fails at the outset because it
is not based on any limitation appearing in the claims. Thus,
the environmental conditions are immaterial. See In re Self,
671 F.2d 1344, 1350, 213 USPQ 1, 5 ((CCPA 1982).
Appellants argue “[n]either EP 0404561 [Nishio] nor
Hosoya et al. discloses the critical combination of the charge
5
Page: Previous 1 2 3 4 5 6 7 8 9 10 11 Next
Last modified: November 3, 2007