Ex parte LAW et al. - Page 6

              Appeal No. 1996-1362                                                                                     
              Application 08/234,074                                                                                   

              photosensitive member causing black spots on the produced image, and [provides]                          
              improved charging characteristics and reduced deterioration over time (translation p.2:                  
              problem solved by the invention).” (Id.)  The examiner acknowledges that Matsumura "does                 
              not exemplify the use of alcohol treated silica," but relies on Akiyama as disclosing "that              
              alcohol coated titanium oxide and alcohol coated silica are alternatives for each other in               
              the treatment of toners (see Table 1's list of inorganic compounds and specifically                      
              additives M through R)." (Id.)   The examiner further urges that (Supp. Answer, page 4):                 
                            The supporting Akiyama reference teaches an advantage to                                   
                            be gained through the use of alcohol carbon chains of 20 to 60                             
                            because the strength of the film formed on the silica or titania                           
                            is improved.  Below this carbon chain length, a film is still                              
                            present on the titania or silica and abrasion is reduced during                            
                            fixing (translation, p 9).  There is also substantial overlap in the                       
                            properties desired by the references such as, with reference to                            
                            Akiyama, cleaning, environmental stability (charging stability in                          
                            Matsumura) and durability (reduced                                                         
              deterioration over time in Matsumura).                                                                   
                     Here, the examiner is referencing that portion of Akiyama from page 9, quoted in                  
              our previous decision, which states:                                                                     
                            The alcohol with a carbon numbers of 20-60 that is solid at                                
                            ordinary temperatures . . . Straight-chain alcohols are                                    
                            desirable.  Crystallinity drops in alcohols having a carbon                                
                            number of less than 20 and the strength of the film formed by                              
                            the lubricant is low . . . and there is little increase in                                 

                     resistance to abrasion.  When only a solid alcohol with a carbon number                           


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