Ex Parte Tateishi et al - Page 3



          Appeal No. 2006-0571                                                        
          Application No. 09/951,407                                                  

          35 U.S.C. § 103(a) as being unpatentable over Mohri in view of              
          Taguchi.                                                                    
               We have thoroughly reviewed the respective positions                   
          advanced by appellants and the examiner.  In so doing, we concur            
          with appellants that the examiner has not set forth a prima facie           
          case of anticipation or obviousness under § 102 and § 103,                  
          respectively.  Accordingly, we will not sustain the examiner's              
          rejections.                                                                 
               It is well settled that claim language must be given its               
          broadest reasonable interpretation consistent with the supporting           
          specification and the state of the prior art.  In re Morris,                
          127 F.3d 1048, 1054-55, 44 USPQ2d 1023, 1027-28 (Fed. Cir. 1997).           
          In the present case, we agree with appellants that the instant              
          specification and the state of the art imparts a meaning to the             
          claim language "toner image-receiving layer" that does not                  
          encompass a layer that has been developed with toner material.              
          We find that a reasonable interpretation of the claimed toner               
          image-receiving layer is a layer that exits prior to development            
          with toner material.  Accordingly, we cannot adopt the examiner's           
          reasoning that the toner-developed layer of Mohri is tantamount             
          to a description of the claimed toner image-receiving layer                 

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