Appeal 2007-1855
Application 10/815,650
. . . is approximately 5 µm” (id. 5). Appellants contend the Examiner
improperly equated “qualitative expression of results, such as ‘good’ and
‘poor’ thin-line reproducibility” disclosed in the Specification and the prior
art “to find that means to obtain the results are quantitatively the same, such
as a CV of 80% or less” as “[t]here is no indication that the respective
standards of measurement” in the Specification and Machida are the same
(id. 7). Appellants contend it is not “proper for the Examiner to use
Applicants’ own comparative data, which is not prior art, against them” (id.).
Appellants contend this case is not one of “inherent anticipation, wherein an
inventor discovered an inherent property of the prior art” because “it is
impossible to verify that Machida’s toner (1) does, in fact, meet the CV
limitation, since Machida has not disclosed how his toner (1) was prepared”
and thus, Machida does not describe and enable the claimed invention (id. 7-
8p; original emphasis omitted).
The Examiner responds Appellants have not provided convincing
evidence because Appellants appear “to know how to obtain the Machida
activated carbon average particle diameter of 4.5 µm from the commercial
product used in Machida and how to make the Machida toner (1)” but have
not “provided any evidence to show why the CV of the Machida activated
carbon, roughly, the width of distribution of particle diameters about the
volume average particle size, D50, cannot be determined once the Machida
toner (1) is reproduced” (Answer 18). The Examiner finds “[c]omparative
example 1 in the Declaration exemplifies a toner comprising a charcoal
powder having a particle size of 5.59 µm and a CV of 88.2% and a particular
binder resin” which “produced images with ‘poor’ background fogging and
‘poor’ thin-line reproducibility” while Machida discloses that toner (1) with
6
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