Appeal No. 1997-1592
Application No. 08/325,566
Appellant contends that a person skilled in the art reading the Aizawa reference would not have
been taught what the size of the individual grains of carbon black ought to be. (Appellant’s Brief, p. 5).
Furthermore, appellant cites Van Nostrand as disclosing that carbon black for commercial applications
has a particle size ranging from 100 to 5,000 Fm. (Appellant’s Brief, p. 5).
The examiner has failed to establish that the Aizawa reference renders obvious appellant’s
claimed charging member having a surface protective layer containing electrically conductive fine
particles having a particle size of not greater than 5 Fm. As noted by appellant, Aizawa is silent as to
carbon black particle size. Yet, it is well settled that to establish a prima facie case of obviousness the
prior art reference (or references when combined) must teach or suggest all the claim limitations. Any
motivation to modify the prior art references must flow from some teaching in the art that suggests the
desirability or incentive to make the modification needed to arrive at the claimed invention. In re
Napier, 55 F.3d 610, 613, 34 USPQ2d 1782, 1784 (Fed Cir. 1995). The examiner, however, has
failed to demonstrate that one skilled in the art would be motivated to employ carbon particles having a
particle size of not greater than 5 Fm in the developer-retaining member sleeves of Aizawa.
The examiner’s reliance on the Kirk-Othmer Encyclopedia fails to establish that the one skilled
in the art would desire appellant’s claimed 5 Fm or less particle size for Aizawa’s carbon black.
Specifically, Kirk-Othmer states that “carbon blacks differ in particle size or surface area, average
aggregate mass, particle and aggregate mass distributions, morphology or structure, and chemical
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