Appeal No. 2001-0345
Application 09/041,416
reference specifically teaches the artisan to utilize routine
experimentation to optimize the desired result.
Like the examiner observes in the answer, appellants have no
substitutive considerations in the arguments of Calabrese until
page 13 of the brief. Because of the specific teaching of the
alternative use of liquid and powder-based toners at page 3 of
Doyle, a significant number of appellants' arguments in the brief
appear to be misplaced. The examiner is correct at pages 7 and 8
of the answer in noting that appellants' own discussion of the
prior art at page 1, lines 11 and 12 of the specification
indicates that charged dry and liquid toner particles were known
to be usable, apparently interchangeably, in the printing arts.
Moreover, appellants' own statement at the bottom of page 8 that
the toner may be solid or liquid contains no preference for the
use of either for their own disclosed invention. According to
the above analysis, there is no need to address the motivation
argument to substitute a liquid for a solid toner as expressed in
the brief because Doyle teaches the alternative use of both.
Furthermore, appellants’ urging in the brief that the
references respectively teach away from a feature of the claimed
invention is misplaced. As to the specific question of "teaching
away," our reviewing court in In re Gurley, 27 F.3d 551, 553,
8
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