Appeal No. 1997-3801
Application 08/397,960
image by use of radiant heat (answer, page 5). Ohta, 3
however, does not disclose only partial fusing of the toner. 4
The examiner argues that the degree of fusing is a parameter
which would have been the result of routine experimentation
(answer, page 8).
In order for a prima facie case of obviousness to be
established, the teachings from the prior art itself must
appear to have suggested the claimed subject matter to one of
ordinary skill in the art. See In re Rinehart, 531 F.2d 1048,
1051, 189 USPQ 143, 147 (CCPA 1976). The mere fact that the
prior art could be modified as proposed by the examiner is not
sufficient to establish a prima facie case of obviousness.
See In re Fritch, 972 F.2d 1260, 1266, 23 USPQ2d 1780, 1783
(Fed. Cir. 1992). The examiner must explain why the prior art
would have suggested to one of ordinary skill in the art the
desirability of the modification. See Fritch, 972 F.2d at
1266, 23 USPQ2d at 1783-84. The examiner has not provided
3 See, e.g., column 4, lines 18-23 of Ohta.
4 Appellant indicates that “setting” as recited in their
claim 1 and “fusing” as used by Ohta have the same meaning
(reply brief, page 6).
5
Page: Previous 1 2 3 4 5 6 7 Next
Last modified: November 3, 2007