Appeal No. 2006-2693 Page 10
Application No. 09/000/330
art, there must be some motivation, suggestion or teaching of the desirability of making
the specific combination that was made by the applicant.” In re Kotzab, 217 F.3d 1365,
1369-70, 55 USPQ2d 1313, 1316 (Fed. Cir. 2000). However, given that Yoshikawa
broadly encompasses the copolymers of Minami and Minami specifically describes
using its copolymers in toner, we conclude that one of ordinary skill in the art would
have been motivated to include the copolymer of Minami in the developing agent of
Yoshikawa. We agree with the examiner that “the fact that Minami discloses that the
low molecular weight ethylene-cycloolefin copolymers of its invention have a multitude
of uses does not detract from Minami’s teachings that its low molecular weight ethylene-
cycloolefin copolymers are useful as toners.” Examiner’s Answer, page 13-14. A
person desiring to make toner would have been motivated by this teaching to use the
copolymer of Minami in toner.
For at least these reasons, we conclude that the examiner has set forth a prima
facie case that claim 16 would have been obvious over Yoshikawa in view of Minami,
which Appellants have not rebutted. We therefore affirm the rejection of claim 16 under
35 U.S.C. § 103. Claims 21, 24, and 35 fall with claim 16.
Claim 28 substantially corresponds to claim 16 except that it recites that the
alpha-olefin is ethylene, propylene, or butylene. Claim 29 depends from claim 28 and
recites that the alicyclic compound is cyclohexene or norbornene. Claim 30 also
depends from claim 28 and recites that the alicyclic compound is norbornene and the
alpha-olefin is ethylene.
Appellants argue that “none of the examples of Yoshikawa use a copolymer
having an alicyclic compound having one double bond and alpha-olefin, specifically,
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