Appeal No. 1997-1801
Application 08/351,162
In the examiner’s view the prior art multicolor toners appear to be no different than the toners
made by applicants’ process. We agree.
C.
Applicants’ brief does not challenge that one skilled in the art would conclude that the multicolor
toners described by Tomanek, Nakano and Anderson are the same as the toners claimed by applicants.6
Rather, applicants argue (1) that references do not anticipate because they do not teach the specific process
steps required by the claims and (2) that declaration evidence shows that the powdered color toners of the
claims are different than the powdered color toners taught in the prior art.
1.
Applicants’ first argument is clearly inconsistent with the well established precedent that the
patentability of product-by-process claims is based upon the product not on the process steps used to
make that product. E.g., Thorpe, 777 F.2d at 697, 227 USPQ at 966. In support of their argument,
applicants rely on Scripps, 927 F.2d at 1576, 18 USPQ2d at 1010 and In re Marshall, 578 F.2d 301, 198
USPQ 344 (CCPA 1978). Brief, pp. 4-9. Both cases are easily distinguished. The portion of the Scripps
opinion to which applicants direct our attention states:
Invalidity for anticipation requires that all of the elements and limitations of the
claim are found within a single prior art reference. There must be no difference
between the claimed invention and the reference disclosure, as viewed by a person
of ordinary skill in the field of the invention.
It is sometimes appropriate to consider extrinsic evidence to explain the
disclosure of a reference. Such factual elaboration is necessarily of limited scope
6
Section 1.192(a) provides in relevant part:
Appellant must . . .file a brief in triplicate. The brief . . . must set forth the authorities and
arguments on which appellant will rely to maintain the appeal. Any arguments or
authorities not included in the brief will be refused consideration by the Board of Patent
Appeals and Interferences, unless good cause is shown.
6
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