Appeal 2007-4185
Application 10/743,097
Examiner points out Combes employs different vibration time and different
screen sizes than illustrated in the Specification, contending different test
parameters are known in the art and one of ordinary skill would expect
different amounts of the toner to be retained on Combes’ screens, e.g., 150
µm screen, easily passing therethrough compared to those in the
Specification, e.g., 38 µm screen, which would retain the same particles
(Answer 6-7).
The Examiner further contends that contrary to Appellants’ position,
“there is no definition of the test in the claims or the specification” (Answer
7). The Examiner contends there is no disclosure in the Specification “that
the amount of toner on each screen is measured and multiplied by a factor as
in Combes;” “that the formula of Combes, which is used for different screen
sizes, can be used with the specification exemplary screen sizes when
measuring cohesion;” and that Combes’ weight factor for different screen
sizes can be used with the screen sizes illustrated in the Specification
(Answer 7-8). The Examiner finds the disclosure in the Specification does
not reference or incorporate Combes or other document for the measurement
of cohesion, and Combes cannot be relied on by Appellants because the
reference discloses different measurement parameters than illustrated in the
disclosure in the Specification (id. 8).
On this record, we determine the Examiner has established a prima
facie case of non-compliance with § 112, second paragraph. We are not
convinced Appellants’ arguments, to the extent supported by the record, 3
3 We have not considered the arguments submitted by Appellants in the
Brief and Reply Brief, or the testimonial evidence in Ms. Vandewinckel’s
6
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Last modified: September 9, 2013