Appeal 2007-1855
Application 10/815,650
Comment [c1]: Thanks, Carolyn!
670 F.2d 1015, 1022-23, 210 USPQ 249, 256 (CCPA 1981) (a factual
statement by an expert in the art is entitled to full consideration in the
absence of evidence to the contrary). Thus, on this record, the “Shirasagi A-
1” particulate material would have to be reduced, such as by pulverization in
some manner, to obtain an average particle size of no more than 5 µm, as
well as to obtain the exemplified activated carbon having average particle
sizes of 1.0 µm and 4.5 µm used in toners (6) and (1), respectively, as
Appellant Moriyama testifies. Accordingly, one of skill and one of ordinary
skill in the art routinely following the teachings of Machida would have
recognized that “Shirasagi A-1” particulate material would have to be
reduced by methods known in the art, including pulverization methods, to
fall within the average particle size range of no more than 5 µm taught in the
reference as well as practice the illustrative examples of the reference
containing this material with average particle sizes of 1.0 µm and 4.5 µm. In
this respect, it is well settled that a reference stands for all of the specific
teachings thereof as well as the inferences one of ordinary skill in this art
would have reasonably been expected to draw therefrom, see In re Fritch,
972 F.2d 1260, 1264-65, 23 USPQ2d 1780, 1782-83 (Fed. Cir. 1992); In re
Preda, 401 F.2d 825, 826, 159 USPQ 342, 344 (CCPA 1968), presuming
skill on the part of this person. In re Sovish, 769 F.2d 738, 743, 226 USPQ
771, 774 (Fed. Cir. 1985); see also In re Graves, 69 F.3d 1147, 1152, 36
USPQ2d 1697, 1701 (Fed. Cir. 1995), and cases cited therein (a reference
anticipates the claimed method if the step that is not disclosed therein “is
within the knowledge of the skilled artisan”).
The evidence in the record does not establish the actual
correspondence between the D50 and CV measurements used by Appellants
15
Page: Previous 7 8 9 10 11 12 13 14 15 16 17 18 19 20 21 Next
Last modified: September 9, 2013