Appeal 2007-1855
Application 10/815,650
to describe the particle size range of the charcoal powder, which can be
activated carbon, in the claimed toner compositions, and the average particle
size measurement used by Machida to describe the particle size range of the
activated carbon in the toner compositions therein. We agree with the
Examiner that evidence to compare the claimed toners encompassed by the
claims as we have interpreted the claims above, with Machida’s disclosure
of the range of activated carbon of no more than 5 µm in toner compositions
and of toner embodiments containing activated carbon having average
particle sizes 1.0 µm and 4.5 µm, with respect to the provisions of § 102(b)
and § 103(a) is reasonably provided by the common properties used to
evaluate the images prepared with the toner compositions which are
disclosed in the Specification and in Machida to be dependent on the particle
size of the activated carbon powder therein.
Indeed, we determine the Examiner has established that, prima facie,
it reasonably appears from the seemingly similar image results disclosed in
the Specification and Machida for toner compositions containing activated
carbon in the particles size ranges and embodiments falling therein,
respectively, that the claimed toner compositions are identical or
substantially identical to the toner compositions disclosed by Machida
within the meaning of §§ 102(b) and 103(a). Thus, the burden shifts to
Appellants to establish by effective argument and/or objective evidence that
the claimed invention patentably distinguishes over Machida, whether the
rejection is considered to be based on § 102(b) or § 103(a). See, e.g., In re
Spada, 911 F.2d 705, 708-09, 15 USPQ2d 1655, 1657-58 (Fed. Cir. 1990);3
3 The Board held that the compositions claimed by Spada
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