Appeal 2006-2507
Application 10/106,473
sole basis that the prior art fails to disclose or suggest claim step (ix), i.e.,
retaining the mixture temperature for a period of from 12 to about 20 hours
to permit further coalescence (Br. 2; Reply Br. 1).
The Examiner’s position is that
[t]he heating time is a result-effective variable because it
controls the toner size. Given that a broad heating time is
disclosed in each reference and that the greatest heating time is
disclosed as a relative value in Kmiecik-Lawrynowicz, the
artisan would be expected to optimize the heating time to give
the particles of specified size, which overlap between Patel and
Kmiecik-Lawrynowicz.
Examiner’s Answer 6.
Appellants argue that the Examiner has failed to establish a prima
facie case of obviousness because the Examiner has not explained why one
of ordinary skill in the art would have been motivated to use a heating time
of 12 hours, which is outside the range taught by both Patel1 and Kmiecik-
Lawrynowicz (Reply Br. 1-2). Appellants dispute the Examiner’s finding
that one of ordinary skill in the art would understand Kmiecik-
Lawrynowicz’s disclosure of heating for “about 10 hours” as suggesting a
time of 12 hours (Answer 9). Reply Br. 3. Appellants maintain that one of
ordinary skill in the art would more likely look to the overlapping portion of
the Patel and Kmiecik-Lawrynowicz ranges. Id. at 2.
A claimed invention is unpatentable if the differences between it and
the prior art “are such that the subject matter as a whole would have been
obvious at the time the invention was made to a person having ordinary skill
1Patel teaches retaining the mixture temperature for a period of 0.5 to 6 hours1
to achieve a toner particle size of about 2 to 25 microns.
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