Appeal 2006-2968
Application 10/039,481
CATHERINE Q. TIMM, concurring
I agree with my colleagues that the decision of the Examiner to reject
claims 32-46 under 35 U.S.C § 112, ¶ 1 should be sustained. However, my
reasoning differs.
The Examiner has the initial burden of presenting evidence or reasons
why persons skilled in the art would not recognize in the disclosure a
description of the invention defined by the claims. In re Wertheim, 541 F.2d
257, 263, 191 USPQ 90, 97 (CCPA 1976). The Examiner here points out
the Specification only discloses using pigmented polymer particles with
weak or no chargeability or using particles which have reverse polarity
(Answer 3-4; Specification 4:35-5:1, 5:11-16, 5:30-34, 5:37-6:3; 6:32-7:30)
whereas claims 32 and 46 do not limit the level of chargeability of the
pigmented polymer particles (Answer 3-4). The Examiner’s claim
interpretation is reasonable in light of the fact that the step of dispersing the
pigmented polymer particles does not include any language limiting their
chargeability. Appellant contends that “only an increase in the charge is
defined, since claims 32 and 46 define the coating as providing a sufficient
chargeability, indicating that it did not have same without the coating.” (Br.
6). We cannot say that the language cited by Appellant is sufficient to show
that the Examiner’s interpretation of the claims is unreasonable. The fact
that the coating provides to the particles a chargeability sufficient to give the
toner particles the given particle conductivity does not foreclose the
possibility that the pigment particles have themselves a sufficient
chargeability to allow imaging.
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