Appeal No. 2006-2693 Page 8
Application No. 09/000/330
waxes, and a charge control agent. Col. 2, lines 41-45; col. 4, lines 36-49. Minami
describes a copolymer comprising polymerized units from ethylene and polymerized
units from a cycloolefin having one double bond, such as norbornene. Col. 4,
lines 26-65; col. 6, lines 47-50. We conclude that one of ordinary skill in the art would
have been motivated to use the copolymer of Minami in the developing agent of
Yoshikawa.
Yoshikawa describes a broad range of vinyl-based binder resins. In addition, the
categories of binder resins that are listed as examples include “ethylene-based
copolymers such as polyethylene, ethylene-vinyl acetate copolymer, [and] ethylene-
vinyl alcohol copolymer, . . . alicyclic hydrocarbon, . . . and mixtures thereof” (col. 4,
lines 21-32) and therefore encompass the copolymers described in Minami. In addition,
Minami specifically states that its polymers can be used as electrophotographic toners.
Col. 16, line 2. Minami also discloses that its copolymers have excellent transparency,
thermal resistance, dielectric properties, and mechanical properties. Col. 4, lines 16-21.
Based on these teachings, we agree with the examiner that one of ordinary skill in the
art would have been motivated to include the copolymers described in Minami in the
developing agents described in Yoshikawa.
Appellants note that Yoshikawa provides a list of eighteen examples of vinyl-
based polymers that can be used as a binder for the developing agent, but that “[n]one
of the examples use a copolymer having an alpha-olefin and an alicyclic compound
having one double bond as is required by the applicant’s claimed invention.” Appeal
Brief, pages 8-9. Appellants argue that “[t]here would [have] be[en] no reason to
selectively pick the alicyclic compound having one double bond or alpha-olefin based
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