Appeal No. 1996-1362
Application 08/234,074
greater than 60 is employed, the firming (sic, filming) effect is weak and a
film tends not to form, effectively precluding lubrication. [Emphasis added].
While we would agree that the quoted portion of Akiyama directs one skilled in this
art to the use of a preferred range of C to C aliphatic alcohols in the treatment of the20 60
microparticle material such as titania and silica, we find nothing in the reference which
would reasonably suggest that the use of alcohols having a lower carbon number would be
desirable. It remains that the Akiyama does not direct one or ordinary skill in the art to the
use of alcohols having a carbon chain of less than 20. Similarly, Matsumura, while initially
teaching that the materials including silica and titania are conventional micropowders
useful in toner materials, does not teach or reasonably suggest that the described alcohol
coating of titania particles is equally applicable to materials other than the specific
exemplified titania. In view of the fact that Matsumura explicitly recognizes the equivalence
of such micropowders as additives in toner compositions and then fails to teach or
suggest that the alcohol treatment would have been equally appropriate or desirable for
the other known micropowders is notable. The omission is conspicuous by its absence.
Thus, the best evidence for treating silica with a C to C aliphatic alcohol is Akiyama.16 18
But Akiyama tends to teach away, i.e., if you go below C aliphatic alcohol you will have
20
problems.
In our view, neither Matsumura or Akiyama provides a suggestion or direction which
would have reasonably led one of ordinary skilled in this art to substitute hydrophobic
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