Ex parte LAW et al. - Page 7

              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                
                     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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