Appeal No. 1997-1801
Application 08/351,162
appears to be consistent with the other prior art relied upon in showing mixing the different color toners
subsequent to the grinding step. Thus, the references relied upon fail to suggest modifying the prior art
process to grind a mixture of pellets to form a multicolor toner or developer. Where claimed subject matter
has been rejected as obvious in view of a combination of prior art references, a proper analysis under §
103 requires consideration of whether the prior art would have suggested to those of ordinary skill in the
art that they should carry out the claimed process. In re Vaeck, 947 F.2d 488, 493, 20 USPQ2d 1438,
1442 (Fed. Cir. 1991); In re Dow Chemical Co., 837 F.2d 469, 473, 5 USPQ2d 1529, 1531 (Fed. Cir.
1988). Thus, the examiner has failed to show that the subject matter of claim 1 would have been obvious.
Since claims 8 and 9 depend from claim 1 the subject matter of these claims has likewise not been shown
to have been obvious.
The rejections of claims 1-14 under 35 U.S.C. § 103(a) are reversed.
AFFIRMED -IN-PART
)
RICHARD E. SCHAFER )
Administrative Patent Judge )
)
)
) BOARD OF PATENT
JAMESON LEE )
Administrative Patent Judge ) APPEALS AND
)
) INTERFERENCES
)
RICHARD TORCZON )
Administrative Patent Judge )
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