Appeal 2007-1855
Application 10/815,650
The Examiner contends, with respect to claim 5, that Machida does
not describe the claimed dielectric loss tangent range, but points out
Machida’s “toner (1) provided images with no occurrence of fogging after
50,000 copies, which is the property sought by applicants” (Answer 10,
citing Machida Table 3 at 12). Thus, the Examiner determines “it is
reasonable to presume that the Machida toner has a dielectric loss tangent”
falling with the claimed range, shifting the burden to Appellants to prove
otherwise (Answer 10).
Appellants find Machida discloses using an activated carbon having a
particle size of “approximately 5 µm or less,” and exemplifies a particle size
of 4.5 µm in “Toner (1)” which “results in, inter alia, good fine line
reproducibility” as shown in Table 3 (Br. 4; original under strike emphasis
omitted). Appellants contend the Moriyama Declaration establishes the
activated carbon identified as “Shirasagi A-1” which appears to have been
“pulverized before use” by Machida making it “impossible to determine
what the CV was for” Machida’s exemplified activated carbon (id. 4-6 and
8). Thus, Appellants contend Machida’s disclosure is insufficient with
respect to CV such that one skilled in the art practicing the disclosure
“would be without a clue regarding any significance of CV” and “does not
enable the presently-claimed invention” (id. 5 and 6). Appellants contend
“[t]he Moriyama Declaration demonstrates that a CV above 80% results in
poor background fogging and thin-line reproducibility,” pointing out that
Machida’s data showing a particle diameter of 7.5 µm is not as good as an
approximate particle diameter of 5 µm or less “says nothing about a particle
diameter of 5.59 µm as used in the Moriyama Declaration, which diameter
5
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