Appeal No. 1998-0468
Application No. 08/291,825
polyester binders. The styrene/acrylic resin charge control agents have better stability and
dispersibility when used in polyester binders than compounds conventionally used as
charge control agents. In view of EP ‘265 [Niki], it would have been obvious to use a
styrene/acrylic resin having a copolymerized amino group containing monomer as the
charge control agent in the polyester binder taught by EP ‘275 [Kawabe] in order to obtain
improved stability and dispersibility.” (Examiner’s Answer, page 3, lines 11-17).
We disagree. Niki discloses the properties for the combination of a polyester
resin (A) and a styrene-acrylic resin (B). The hybrid resin binder of Kawabe comprises a
combination of a polyester resin and vinyl resin. The Examiner asserts that the hybrid resin
of Kawabe is formed of a preponderance of polyester resin. (Examiner’s Answer, paragraph
bridging pages 3 and 4 ). Kawabe does not disclose the hybrid resin binder has the same
properties as a polyester resin binder. It has not been established that the hybrid resin
binder of Kawabe has the same properties as a polyester resin binder or the disclosed
benefit of Niki would apply to a hybrid polyester resin. Thus, the prima facie case of
obviousness has not been established on this record. The mere fact that the prior art could
be modified as proposed is not sufficient to establish a prima facie case. See In re Fritch,
972 F.2d 1260, 1266, 23 USPQ2d 1780, 1783 (Fed. Cir. 1992).
In the absence of sufficient factual evidence or scientific rationale to establish why
and how a skilled artisan would have arrived at the subject matter of claims 1-10 from the
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