Appeal No. 2006-2693 Page 6
Application No. 09/000/330
references. The examiner states that “Yoshikawa discloses a toner that comprises a
colorant, such as carbon black, a vinyl-based binder resin, a wax comprising two
particular polyolefin waxes, and a charge control agent. Col. 2, lines 1-7, and
examples 1-3 at cols. 7-8. . . . Yoshikawa does not disclose that the vinyl-based binder
resin is a polyolefin resin having a cyclic structure as recited in the instant claims.
However, Yoshikawa discloses that the vinyl-based binder resin can be ethylene-based
copolymers or alicyclic hydrocarbon resins. Col. 4, lines 24 and 30.” Examiner’s
Answer, page 7.
The examiner notes that “Minami discloses a random copolymer resin having a
cyclic structure that is within the compositional limitations recited in the instant claims.”
Id., at page 8. In particular, Minami discloses a random copolymer “obtained from
ethylene and at least one cycloolefin, such as bicyclo[2,2,1]hept-2-ene, which is
incorporated in the polymer chain without ring opening. Col. 4, lines 30, to col. 8, line 5,
and especially col. 6, line 50.” Examiner’s Answer, page 8. “[B]icyclo[2,2,1]hept-
2-ene . . . is another name for norbornene.” Id. In addition, “Minami discloses that the
low molecular weight random copolymers can be used as electrophotographic toners.
Col. 15, lines 58-59, and col. 16, line 2.” Examiner’s Answer, page 8. Furthermore,
“Minami teaches that its random copolymers have excellent transparency, thermal
resistance, dielectric properties, and mechanical properties. Col. 4, lines 16-21.”
Examiner’s Answer, page 9.
The examiner argues that “[i]t would have been obvious for a person having
ordinary skill in the art, in view of the teachings of Minami, to use the random copolymer
obtained from ethylene and a cycloolefin, such as norbornene, . . . taught by Minami, as
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