Appeal No. 1997-0008
Application 08/347,190
“features” of the process embodiment are found in said limitations and that this “process has not been
shown to inherently produce a magnetic brush which brushes the surface of the photosensitive member
as claimed,” concluding that the “specification fails to teach how to make and use the invention having a
magnetic brush without a magnetically attractable material noting the carrier particles to form the brush”
(id.).
Appellant counters that “due to the relative predictable art of the present invention, the single
embodiment at pages 9-10 of the application indicates . . . possession” as claimed (principal brief, page
9). In support of his position, appellant submitted a declaration under 37 CFR § 1.132 from which
he quotes with emphasis in the principal brief (page 10; underscoring omitted; italics supplied) with
respect to that part of the embodiment disclosed at page 10 of the specification, the quote reading in
pertinent part:
4. . . . One skilled in the art, however, would not consider a method with these particular
features to be the only image-forming method discovered by the inventor. Instead, it would be
apparent to one skilled in the art that the inventor envisioned other methods which similarly
utilized a magnetic brush for contact-type developing, but in which some or all of the numerous
features mentioned above would be varied. Such methods include, for example, the method
of claim 7.
Appellant further contends that the limitation in claim 7 with respect to the “magnetic brush” is an
“inherent feature” of the specific embodiment of which “would be apparent to one skilled in the art”
from that disclosure (principal brief, page 12, with quotation of ¶ 3 of appellant’s declaration).
Appellant further relied on United States Patent No. 4,517,274 as “showing a similar magnetic brush”3
(id., pages 12-13).
The examiner responds that
there is only one method disclosed and enabled. The specification is devoid of any other
specific or general discussion of the imaging method steps claimed using the claimed toner. The
Summary of the invention on page 4 discusses the step of removing toner from the surface of an
image carrier after transfer. This does not support the claimed method. The remainder of page
4 through the bottom of page 9 discuss only the instant toner. There is no discussion of a
method on these pages. . . . There is nothing in the instant specification to show that appellant
3This patent was cited in ¶ 3 of appellant’s declaration.
- 4 -
Page: Previous 1 2 3 4 5 6 7 8 Next
Last modified: November 3, 2007