Appeal 2007-4185
Application 10/743,097
values” disclosed that “may desirably be used,” and the use of an illustrative
example “should not discount this specific guidance” or indicate that
different screen sizes cannot be used (id. 3-4).
The difficulty we have with Appellants’ arguments is that the same do
not explain the manner in which one of ordinary skill in this art would
determine appropriate “theoretical” screen sizes for each of the three screens
in the sieve to ensure that a “particle” of aggregated, cohesive toner
“particles” passes through all screens absent a desired aggregated tone
particle size range, so as to result in a value to compare with the claimed
cohesion range. Indeed, a possible result under this protocol is that all or
almost all particles can and may pass through the screens, resulting in a false
cohesion value. Furthermore, as the Examiner points out, the particle size of
the aggregated toner particles, and thus the cohesion value, can be modified
under test conditions with respect to the amount of the sample and the
vibration parameters. In these respects, the formula set forth in Combes on
which Appellants rely assumes a controlled test, and even then provides for
a screen size weighting factor. On this record, we are of the opinion that the
Specification does not disclose the details of the test to determine “cohesion”
as claimed to one of ordinary skill in the art in a definite manner.
Accordingly, based on our consideration of the totality of the record
before us, we have weighed the evidence of indefiniteness of the claim
language set forth by the Examiner with Appellants’ countervailing evidence
of and argument for definiteness, and conclude that claims 1 through 19 fail
little weight when the Patent Office questions the efficacy of those
statements. [Citations omitted]”).
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