Ex parte LAW et al. - Page 9



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


              suggestion for combining the disclosure of Matsumura and Akiyama in a manner which                       
              would support the substitution of silica for titania in Matsumura and result in the claimed              
              toner composition consisting of hydrophobic silica which has been treated with a long                    
              chain aliphatic alcohol, wherein the alcohol has a carbon chain length of from 16 to 18                  
              carbon atoms.  It naturally follows that if a prima facie case of obviousness has not been               
              established for the toner composition of claim 1, for example, that the prior art relied upon            
              by the examiner similarly does not establish a prima facie case within the meaning of 35                 
              U.S.C.  103 as to a developer composition such as claimed in claim 17 which is                          
              comprised of a toner which contains the silica which has been treated in the manner called               
              for by the invention.                                                                                    
                     The remaining references relied upon by the examiner in rejecting the claims on                   
              appeal do not provide that which is missing from the combination of Akiyama and                          
              Matsumura.  Thus, on this record, the examiner has failed to provide those facts or                      
              evidence which would establish a prima facie case of obviousness within the meaning of                   
              35 U.S.C.  103 as to the claimed subject matter.  Where, as here, the examiner fails to                 
              establish a prima facie case, the rejection is improper and will be overturned.  In re Fine,             
              837 F.2d 1071, 1074, 5 USPQ2d 1596, 1598 (Fed. Cir. 1988).  Having determined that                       
              the examiner has failed to establish a prima facie case of obviousness                                   




              with regard to the claimed subject matter, we find it unnecessary to consider the evidence               

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