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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