Ex parte TAVERNIER et al. - Page 5




          Appeal No. 96-3803                                                          
          Application No. 08/128,245                                                  


          would reasonably believe that the prior art and claimed                     
          products   share the same properties.  Here, we are not                     
          satisfied that the examiner has drawn the requisite                         
          correspondence between the claimed product and the prior art                
          product.                                                                    
               The sole correspondence established by the examiner                    
          between the prior art products and the claimed product is that              
          commercially-available AEROSIL and CAB-O-SIL is used for the                
          inorganic microparticles.  However, as demonstrated at pages                
          15-17 of appellants' specification, including TABLE II, a                   
          variety of types of fumed silica microparticles can be                      
          employed that have                                                          





          different properties regarding BET surface and methanol value.              


          Specification TABLE II demonstrates that microparticles having              
          properties within the claimed ranges produce better resolution              
          than toner compositions comprising microparticles having BET                
          surface and methanol values outside the claimed ranges.                     
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