Appeal 2007-1855
Application 10/815,650
11). Thus, the evidence based on the same toner composition ingredients
containing activated carbon having a D50 of 5.59 μm ,which on this record
falls outside of Machida’s average particle size range of no more than
5.00 μm for the same material, cannot be said to reflect any patentable
difference between the claimed toner compositions and those of Machida,
and particularly Machida’s exemplified toner compositions (1) and (6)
containing activated carbon having an average particle size of 4.5 μm and
1.0 μm, respectively. Indeed, the evidence adduced based on different
methods of blending the toner ingredients establishes that it is not the
particle size of the activated carbon alone that affects the properties of the
toner composition. Cf. In re Dunn, 349 F.2d 433, 439, 146 USPQ 479, 483
(CCPA 1965) (“[W]e do not feel it an unreasonable burden on appellants to
require comparative examples relied on for non-obviousness to be truly
comparative. The cause and effect sought to be proven is lost here in the
welter of unfixed variables.”).
Therefore, in the absence of evidence comparing claimed toner
compositions with Machida’s illustrative toner compositions (6) and (1)
containing activated carbon powder with an average particle size of 1.0 μm
and 4.5 μm, respectively, wherein the sole difference is the particle size of
the activated carbon powder, we determine that the Examiner’s prima facie
case of anticipation and of obviousness has not been rebutted by Appellants.
Accordingly, we have again evaluated all of the evidence of
anticipation and of obviousness found in Machida alone and as combined
with other prior art as applied with Appellants’ countervailing evidence of
and argument for non-anticipation and nonobviousness, including the
evidence in Appellants’ Specification and Moriyama Declaration as relied
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