Appeal No. 2004-2257
Application No. 09/841,486
It follows that the examiner on this record has not
established a prim facie case of anticipation. Accordingly, we
reverse the examiner’s Section 102 rejection.
SECTION 103 REJECTIONS
Under Section 103, both the motivation or suggestion to
combine the prior art teachings and the requisite reasonable
expectation of success must be found in the prior art references
in order to establish a prima facie case of obviousness. In re
Vaeck, 947 F.2d 488, 493, 20 USPQ2d 1438, 1442 (Fed. Cir. 1991).
Here, as evidence of obviousness of the subject matter
defined by claims 10 and 11 under Section 103, the examiner
relies on the disclosures of Suzuki, Arai and Fujita. According
to the examiner (Answer, pages 7-8), Suzuki teaches all the
claimed limitations, except for the hydrophilic alkylene oxide
polymer recited in claim 10 or the hydrophilic alkylene oxide
polymer produced by a reaction between an alkylene oxide compound
and a dicarboxylic acid compound as recited in claim 11. The
the fine hydrophilic thermoplastic resin for forming the
recording medium contemplated by the appellants. See column 7,
lines 6-16. As indicated by Suzuki (column 5, lines 23-37), the
proportion of the fine hydrophilic solid powder used “can be
varied widely according to the types of the resin and the fine
solid powder, the water absorption and the water vapor adsorption
ratio required of the resulting porous agglomerated particles,
etc.” (Emphasis added).
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