Appeal No. 1997-1752
Application No. 08/451,379
that Nash supports a prima facie case of obviousness for the
claimed process steps.
The examiner cites case law for the proposition that "it
is prima facie obvious to select any order of adding materials
in order to form the final product of the reference" (page 4
of Answer). While this has generally been held to be true by
our review court, the claimed process entails something other
than just changing the order of mixing various ingredients.
For one, the claimed process requires a mixing of different
toners and, as noted above, the examiner has not referenced
any disclosure in Nash, or any other reference, that such
mixing was known in the art. Also, appellants' process
requires the first toner to have surface additives of zinc
stearate and fumed silica and the second toner to have no
surface additives. If the claimed invention defined a process
of preparing a toner by first adding pigment particles and
then surface additives rather than a prior art technique of
first adding surface additives and then pigment particles, the
cases cited by the examiner would be more appropriate.
One final point remains. Upon return of this application
to the examiner, we recommend that the examiner consider the
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