Appeal No. 2006-2693 Page 11
Application No. 09/000/330
ethylene, propylene or butylene as is required by [claim 28]. There would [have] be[en]
no reason to selectively pick the alicyclic compound having one double bond or the
specific alpha-olefin (ethylene, propylene or butylene) based copolymers in this group of
18 examples of binders to arrive at [claim 28].” Appeal Brief, page 14. Appellants’
arguments with respect to claims 29 and 30 are similar. See Id., at pages 15 and 16.
However, as discussed above, the examiner is not relying on Yoshikawa for the
copolymer. Minami describes a copolymer derived from ethylene and an alicyclic
compound having one double bond, such as norbornene. Col. 4, lines 26-65; col. 6,
lines 47-50. In addition, for the reasons discussed above, 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. For at least these reasons, we conclude that the
examiner has set forth a prima facie case that claims 28-30 would have been obvious
over Yoshikawa in view of Minami, which Appellants have not rebutted. We therefore
affirm the rejection of claims 28-30 under 35 U.S.C. § 103. Claims 26 and 27 fall with
claim 29.
Summary
The examiner’s obviousness position is supported by the preponderance of the
evidence of record. We therefore affirm the rejection of claims 16, 21, 24, 26-30, and
35 under 35 U.S.C. § 103. However, we reverse the rejection of claims 16, 21, 24, 25,
28, and 35 under 35 U.S.C § 112, first paragraph. As a result, claim 25 is not subject to
any outstanding rejection.
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