Appeal 2007-4185
Application 10/743,097
Claim 1 illustrates Appellants’ invention of a toner including toner
particles, and is representative of the claims on appeal:
1. A toner including toner particles comprising a styrene acrylate
binder and at least one colorant, and wherein the styrene acrylate binder has
a weight average molecular weight of about 20 to about 30 kpse and a
molecular peak of about 23 to about 28 kpse, the toner particles have a
weight average molecular weight of about 28 to 130 kpse, a number average
molecular weight of about 9 to about 13.4 kpse and a MWD of about 2.2 to
about 10, and the toner particles have a cohesion of about 55 to about 98% at
a mean circularity of about 0.94 to about 0.98.
The Examiner considers the evidence in this reference:
Combes US 6,673,501 B1 Jan. 6, 2004
Appellants request review of the ground of rejection claims 1 through
19 under 35 U.S.C. § 112, second paragraph, as being indefinite for failing
to particularly point out and distinctly claim the subject matter which
applicants regard as the invention (Br. 7; Answer 3-8).
Appellants argue the claims as a group, and thus, we decide this
appeal based on claim 1. 37 C.F.R. § 41.37(c)(1)(vii) (2006).
The issue in this appeal is whether the Examiner has established that, prima
facie,1 when the claim language “the toner particles have a cohesion of about
55 to about 98% at a mean circularity of about 0.94 to about 0.98” of claim 1
is considered as a whole as well as in view of the written description in the
Specification as it would be interpreted by one of ordinary skill in the art, the
claims in fact fail to set out and circumscribe a particular area with a
1 The initial burden of establishing a prima facie case under § 112, second
paragraph or any other statutory provision rests with the Examiner. See
In re Oetiker, 977 F.2d 1443, 1445, 24 USPQ2d 1443, 1444 (Fed. Cir.
1992), (citing In re Piasecki, 745 F.2d 1468, 1472, 223 USPQ 785, 788
(Fed. Cir. 1984)).
2
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