Appeal No. 1997-1801
Application 08/351,162
Applicants also argue that the toners of the prior art and the toner’s made according to applicant’s
process are different. In support of this position applicants present two declarations, both by Dr. Edward
J. Gutman, one of the named inventors. In order to overcome, the prima facie case, the applicant must
present evidence establishing that the prior art products are different than the products claimed. Thorpe,
777 F.2d at 697, 227 USPQ at 966; Fitzgerald, 619 F.2d at 70, 205 USPQ at 596; Best, 562 F.2d at
1255, 195 USPQ at 433-34; Brown, 459 F.2d at 535, 173 USPQ at 688. Neither of Dr. Gutman’s
declarations show that the products described in the prior art are different than products made according
to the process of applicants claims. Dr. Gutman’s declarations may show that for the specific brown
colored toner compositions described in the declarations, toners that are made by separate grinding
followed by mixing may have some different characteristics then toners that are made using grinding and
mixed simultaneously. However, applicant’s burden is to show that the prior art toners are different than
those made by applicant’s process. Applicant’s declarations do not show that the two-color toners
described by Tomanek, Nakano and Anderson would have different characteristics if made according to
the process in claim 13.
D.
The rejection of claims 13 and 14 under 35 U.S.C. § 102 is affirmed.
IV.
The examiner also entered rejections of claims 1-5 and 7-14 under 35 U.S.C. § 103(a) as
unpatentable over the combination of Anderson and Nakamura and of claims 1-3 and 6-14 under
35 U.S.C. § 103(a) as unpatentable over the combination of Nakano and Nakamura. We reverse these
rejections.
Claim 1 requires the step of “grinding a mixture of pellets of at least one color toner material and
pellets of at least one other color toner material . . . .” Neither Anderson nor Nakano teach the step of
grinding a mixture of different color toner pellets as required by the claims. The Nakamura reference
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