Appeal No. 1996-1362
Application 08/234,074
in this appeal, we have given careful consideration to the appellants' specification and
claims and to the respective positions articulated by the appellants and the examiner. We
make reference to the Examiner's Answer mailed November 22, 1995 (Paper No. 18) as
supplemented by the additional Answer of January 26, 1996 (Paper No. 21) and the
Supplemental Answer of April 28, 2000 (Supp. Answer) (Paper No. 27) for the examiner's
reasoning in support of the rejection and to the Appellants' Brief of October 19, 1995
(Paper No. 17), as supplemented by the reply briefs filed March 9, 1999 (Paper No. 24)
and May 30, 2000 (Paper No. 28) for appellants' arguments thereagainst.
In our view, the determinative question presented by this rejection is whether it
would have been obvious to one of ordinary skill in this art at the time of the invention to
substitute silica (silicon dioxide) for the titania (titanium dioxide) in the toner composition
disclosed by Matsumura wherein titania is surface treated with an organic compound
having a melting point in a specified range prior to the addition of the powder to a toner
composition. Matsumura specifically exemplifies the treatment of titania with cetyl (C16)
alcohol. (See Supp. Answer, page 5 and Supp. Brief, paragraph bridging pages 3-4).
The examiner has established that both silica and titania were known "treating agents that
increase toner fluidity and caking resistance (Matsumura translation, page.2)." (Supp.
Answer, page 3). Further, the examiner notes that treating of titania with certain defined
organic compounds, including cetyl alcohol "avoids poor cleaning, solidified toner on the
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