Ex Parte WADA et alDownload PDFPatent Trial and Appeal BoardJul 6, 201713933918 (P.T.A.B. Jul. 6, 2017) Copy Citation United States Patent and Trademark Office UNITED STATES DEPARTMENT OF COMMERCE United States Patent and Trademark Office Address: COMMISSIONER FOR PATENTS P.O.Box 1450 Alexandria, Virginia 22313-1450 www.uspto.gov APPLICATION NO. FILING DATE FIRST NAMED INVENTOR ATTORNEY DOCKET NO. CONFIRMATION NO. 13/933,918 07/02/2013 Mitsuo WADA 418229US99DIV 1009 22850 7590 07/10/2017 OBLON, MCCLELLAND, MAIER & NEUSTADT, L.L.P. 1940 DUKE STREET ALEXANDRIA, VA 22314 EXAMINER RODEE, CHRISTOPHER D ART UNIT PAPER NUMBER 1721 NOTIFICATION DATE DELIVERY MODE 07/10/2017 ELECTRONIC Please find below and/or attached an Office communication concerning this application or proceeding. The time period for reply, if any, is set in the attached communication. Notice of the Office communication was sent electronically on above-indicated "Notification Date" to the following e-mail address(es): patentdocket @ oblon. com oblonpat @ oblon. com tfarrell@oblon.com PTOL-90A (Rev. 04/07) UNITED STATES PATENT AND TRADEMARK OFFICE BEFORE THE PATENT TRIAL AND APPEAL BOARD Ex parte MITSUO WAD A, TERUYUKI MITSUMORI, HIROAKI TAKAMURA, MASAYA OOTA, TERUKI SENOKUCHI, SHIHO SANO, MASAKAZU SUGIHARA, SHIRO YASUTOMI, YUMI HIRABARU, and TAKESHI OOWADA Appeal 2016-004016 Application 13/933,9181 Technology Center 1700 Before JEFFREY T. SMITH, WESLEY B. DERRICK, and JULIA HEANEY, Administrative Patent Judges. DERRICK, Administrative Patent Judge. DECISION ON APPEAL STATEMENT OF THE CASE Appellants appeal under 35 U.S.C. § 134 from the Examiner’s decision rejecting claims 2-12. We have jurisdiction under 35 U.S.C. § 6. We AFFIRM. 1 Mitsubishi Chemical Corporation is identified as the real party in interest. Appeal Br. 2. Appeal 2016-004016 Application 13/933,918 THE INVENTION The subject matter of the claims on appeal relates to an image forming apparatus that includes an electrophotographic photoreceptor and a toner. Specification (“Spec.”), Abstract. Claim 2—the sole independent claim—is representative. A method comprising electrostatically charging an electrophotographic photoreceptor, exposing the electrostatically charged electrophotographic photoreceptor to form a latent image, developing the latent image with an electrostatic charge image-developing toner, and transferring the developed image to a recording paper, said method being carried out in an apparatus comprising an electrophotographic photoreceptor comprising a photosensitive layer on an electroconductive support, the photosensitive layer comprising a charge-generating layer and a charge-transporting layer, wherein the charge-generating layer comprises oxytitanium phthalocyanine showing at least main diffraction peaks at Bragg angles (20 + 0.2°) of 9.0° and 27.2° and at least one main diffraction peak in the range of 9.3° to 9.8° to CuKa characteristic X-rays (wavelength: 1.541 angstroms), and the electrostatic charge image-developing toner satisfies following requirements (1) to (4): (1) the volume median diameter (Dv50) is 5.0 pm or more and 7.0 pm or less, (2) the average sphericity is 0.93 or more and 0.965 or less, (3) the volume median diameter (Dv50) of the toner and a content (% by number: Dns) of toner particles having a particle diameter of 2.00 pm or more and 3.56 pm or less satisfy Dns < 0.233EXP(17.3/Dv50), and (4) the number variation coefficient is 22.0 % or less. Appeal Brief filed September 23, 2015 (“Appeal Br.”) (Claims App.), 22. 2 Appeal 2016-004016 Application 13/933,918 THE REJECTIONS2 The claims stand rejected under 35 U.S.C. § 103(a) as follows: 1. Claims 2-5, 7, and 9-12 over Gaims3 in view of Diamond,4 Emoto,5 Xu,6 and Takada7; 2. Claim 6 over Gaims in view of Diamond, Emoto, Xu, Takada, and Yamane8; and 3. Claim 8 over Gaims in view of Diamond, Emoto, Xu, Takada, and Matsuda.9 DISCUSSION We have reviewed the grounds of rejection set forth by the Examiner, Appellants’ arguments and proffered evidence, and the Examiner’s response. On this record, we are unpersuaded that the Examiner erred reversibly and we determine that a preponderance of the evidence supports the Examiner’s conclusion of obviousness. Appellants argue the patentability of the claims as a group on the basis of independent claim 2, contending that the Examiner has failed to establish a prima facie case of obviousness and, even if a prima facie case were made, 2 See Final Office Action issued February 25, 2015 (“Final Act.”), 2-3. 3 Gaims et al., WO 99/45074, published September 10, 1999. Appellants refer to this same reference citing the second named inventor Stephenson. Appeal Br. 8-9. 4 Diamond et al. (eds.), Handbook of Imaging Materials (2nd Ed.) (copyright 2002) pp. 145-64. 5 Emoto et al., US 2004/0053155 Al, published March 18, 2004. 6 Xu et al., US 2003/0003387 Al, published January 2, 2003. 7 Takada et al., US 7,212,777 B2, issued May 1, 2007. 8 Yamane et al., US 2006/0216621 Al, published September 28, 2006. 9 Matsuda et al., US 2003/0104297 Al, published June 5, 2003. 3 Appeal 2016-004016 Application 13/933,918 that unexpected results demonstrate the non-obviousness of the appealed claims. Appellants separately contend the patentability of each of claims 3, 4, 8, 9, and 10. The Prima Facie Case The Examiner relies on Gaims for its disclosure relating to an apparatus for electroreprography including a photoconductive member and its operation for most recited limitations pertaining to the required apparatus, including a titanylphthalocyanine charge generation material. Examiner’s Answer issued January 11, 2016 (“Ans.”), 2-3 (citing Gaims, 1,11. 1-12, 33-37; 2,11. 25-28; 4,11. 14-29, 5,11. 7-22). Noting that Gaims does not specify the apparatus as including a development device comprising a development tank for development toner, the Examiner relies on Diamond for its disclosure of the conventional constmction of an imaging apparatus as including a development system comprising a tank filled with developer, comprising a toner and a carrier. Ans. 3 (citing Diamond, Section 4.2; Figs. 4.2, 4.9). The Examiner finds both Gaims and Diamond disclose the use of toner to develop the image formed on the photoreceptor, but fail to disclose the particular toner claimed. Ans. 3. As to the recited requirements for the toner, the Examiner relies on the teachings of Emoto, Xu, and Takada. Ans. 3-6. The Examiner finds Emoto discloses a toner for electrostatic images having a narrow particle size and controlled sphericity, including examples from Table 2 having volume average particle diameter of from 4.9 pm to 6.9 pm and sphericity of from 0.93 to 0.955, as well as disclosing that “[t]he average sphericity of the toner according to the present invention is 0.900 to 4 Appeal 2016-004016 Application 13/933,918 0.960.” Ans. 3—4; Emoto 57, 152. The Examiner further finds “[t]hese values fall within or overlap substantially with requirements (1) and (2) of the instant claims.” Ans. 4. The Examiner further finds Emoto’s disclosed toners “have a narrow particle size distribution (Dv/Dn) of from 1.00 to 1.20” and “preferably 1.1 to 1.17” where Dv is the volume average particle diameter and Dn is the number average particle diameter and that Emoto teaches the narrow particle size distribution “provides high resolution and high image quality to the developed image.” Ans. 4 (citing Emoto Tflf 45, 152 (Table 2)). Regarding the Dv/Dn ratio, the Examiner relies on Xu for its teaching “that when Dv/Dn is 1 all toner particles have the same size.” Ans. 4 (citing Xu, 1120). Xu also states that “[t]he minimum value of DV/DN is 1.” Xu 1120. Xu also teaches, similarly to Emoto, that a narrow size distribution is preferred in teaching that “a toner with a DV/DN value of 1 is advantageous for forming images with a high resolution.” Xu | 120. The Examiner finds Takada likewise teaches the same Dv/Dn ratio as an expression of particle size distribution and also teaches that narrowing the particle size distribution provides for better quality images because of increased uniformity in the amount of charge. Ans. 4 (citing Takada, col. 8, 11. 22-50). The Examiner further finds that “[t]he cumulative teachings of Emoto clearly show that the toner particle average size [Dv50], shape [sphericity] and breadth of toner size distribution [Dv/Dn] are result affecting.” Ans. 4. In relation to the toner particle size range, the Examiner also finds Emoto teaches minimizing the number of particles having a diameter of less than 3 pm (Ans. 4), which would a priori reduce the toner size distribution 5 Appeal 2016-004016 Application 13/933,918 because it would eliminate particles varying from the average particle size (Ans. 5-6). In sum, the Examiner finds, inter alia, that both the breadth of toner size distribution [Dv/Dn] and the number of smaller toner particles were recognized as result effective variables for the quality of printing. As to requirement (3) of claim 2, as highlighted by the Examiner’s calculations, it merely expresses an upper limit for the number of toner particles in the size range of from 2.00 pm to 3.56 pm as a function of the volume average particle diameter (Dv50). Ans. 5. In setting forth that “the artisan would seek to narrow the particle size distribution” and that in doing so “the artisan would have optimized the particular amounts,” the Examiner de facto determines that the skilled artisan would have arrived at the claimed invention through no more than routine experimentation. Ans. 5-6. As to requirement (4) of claim 2, as highlighted by the Examiner, the “number variation coefficient” merely expresses an upper limit for the variation of toner particles in respect to size. Ans. 6. The Examiner, inter alia, finds Emoto teaches the desirability of a narrow breadth of toner diameters and that it is a result effective variable. Ans. 6. The Examiner determines that the recited number variation coefficient is met through no more than routine optimization as minimizing the breadth of toner diameters likewise reduces the number variation coefficient. Ans. 6. The Examiner concludes that one of ordinary skill in the art at the time of the invention would have found it obvious to use the toner of Emoto in the apparatus of Gaims as modified by Diamond for the benefit of providing, inter alia, high quality images. Ans. 6—7. 6 Appeal 2016-004016 Application 13/933,918 In a general discussion of advantages of the invention (Appeal Br. 4- 8), Appellants contend “that obtaining an image preferable in fogging and memory requires the combination (matching) of a particular oxytitanium phthalocyanine with a particular toner having a relatively lower average sphericity but in a limited range” (Appeal Br. 8). In the argument against the rejection, Appellants contend that none of the references cited disclose a toner satisfying requirements (3) and (4) of claim 2. Appeal Br. 10. Appellants further contend that “[t]he Examiner does not dispute that a toner satisfying both requirements (3) and (4) is not known to exist.” Appeal Br. 11. Appellants argue that the cited prior art does not disclose or suggest carrying out particular steps to produce toner in the particular manner that is discussed in the Specification as being able to provide toner particles meeting both requirements (3) and (4). Appeal Br. 10-11 (citing Spec. 1151, 115, 128,385,406). On this record, Appellants’ argument is unpersuasive both because the claim does not require that the toner be produced in any particular manner and because it fails to “take account of the inferences and creative steps that a person of ordinary skill in the art would employ” in overcoming the difficulties within their level of skill. KSR Int’l Co. v. Teleflex Inc., 550 U.S. 398, 418 (2007); see also id. at 421 (“A person of ordinary skill is also a person of ordinary creativity, not an automaton.”). As to paragraph 51 of the Specification relating to “conventional toners” and difficulties in meeting the specified requirements, we find it insufficient absent persuasive argument or evidence that overcoming these is beyond the ambit of one of ordinary skill, or, further, even a contention by Appellants that the toner of Emoto is a 7 Appeal 2016-004016 Application 13/933,918 “conventional toner” such that the difficulties would be expected in modifying Emoto. As to requirement (3), Appellants argue that the Emoto fails to consider large particles and, as to small particles, teaches minimizing particles within a different size range—having a diameter less than 3 pm— rather than the recited range of 2.00 pm to 3.56 pm. Appeal Br. 11-12, 15- 16. Appellants further argue that Emoto fails to suggest any relationship between the amount of fine particles based on the average particle diameter as expressed in requirement (3). Appeal Br. 12. Appellants further contend that the Examiner’s finding that Emoto reasonably suggests minimization of small particle diameter toners and minimizing the breadth of particle distribution is clearly erroneous because of Emoto’s focus on minimizing the number of toner particles in a different range of particle diameter. Appeal Br. 13. On this record, Appellants’ arguments are unpersuasive because the rejection is grounded on the prior art teaching the desirability of a narrow breadth of toner diameters—a recognized result effective variable—that would lead the skilled artisan to minimize the numbers of particles of both smaller and larger size than the average particle diameter and thus lead them to the claimed subject matter through no more than routine optimization. As to requirement (4), Appellants contend that the disclosure of a ratio Dv/Dn of between 1.00 and 1.2 suggests nothing about the requirement (4). Appeal Br. 13 (citing Spec. 1373). Appellants further cite to paragraph 51 of the Specification and then contend again that “Emoto neither discloses nor suggests a method of obtaining a toner that satisfies all requirements of the present claims.” Appeal Br. 13-14 (citing Spec. ^ 51, 115, 128). 8 Appeal 2016-004016 Application 13/933,918 Appellants summarize the Examiner’s reliance on Xu and Takada.10 Appeal Br. 14-15. On this record, we are not persuaded of reversible error. In particular, we discern no cogent argument contesting the Examiner’s detailed determination that minimizing the value of Dv/Dn, particularly toward its lower bound of 1.00, would concomitantly lead to satisfying requirement (4). Cf. In re Lovin, 652 F.3d 1349, 1357 (Fed. Cir. 2011) (“[W]e hold that the Board reasonably interpreted Rule 41.37 to require more substantive arguments in an appeal brief than a mere recitation of the claim elements and a naked assertion that the corresponding elements were not found in the prior art. Because Lovin did not provide such arguments, the Board did not err in refusing to separately address claims 2—15, 17—24, and 31—34.”). As to Appellants’ contention that Emoto fails to disclose or suggest a method that satisfies all requirements of the present claims, we no discern no persuasive merit because the claims are not limited to particular methods. Further, prior art references are presumed enabled, In re Antor Media Corp., 689 F.3d 1282, 1289 (Fed. Cir. 2012), and Emoto discloses in its range of preferred Dv/Dn ratios of “1.00 > Dv/Dn < 1.15” a Dv/Dn ratio of 1.00 (Emoto 145) that clearly meets requirements (3) and (4) and there is no persuasive evidence on this record that Emoto does not provide the necessary teaching for the skilled artisan to meet requirements (3) and (4) while also providing the required sphericity of requirement (2). 10 We discern no cogent argument of any error in the discussion of Xu and Takada. 9 Appeal 2016-004016 Application 13/933,918 In the Reply Brief, Appellants further discuss the advantages of the instant invention, emphasizing the concept of matching the toner and photoreceptor. Reply Brief filed March 11, 2016 (“Reply Br.”), 2—4. On this record, we discern no persuasive argument that the Examiner erred reversibly in concluding the claims were prima facie obvious because it fails to identify in the fact finding and conclusions that the Examiner did rely on. See generally Ans. Appellants also further contend that the toners of Emoto would not satisfy the limitations of claim 2 because they would not have enabled a person of ordinary skill in the relevant art to produce a toner simultaneously satisfying requirements (1) to (4). Reply Br. 6 (citing Appeal Br. 10,1. 21- 11,1. 21). Appellants further direct our attention to Table 2 of the Specification as support, relying in particular on the failure of Toner G to meet requirements (3) and (4). Reply Br. 6-8. On this record, we do not find Appellants’ reliance on Table 2 as evidencing a lack of enablement timely where there is no good reason given why Appellants did not do so in the Appeal Brief. 37 C.F.R. § 41.41(b)(2); cf McBride v. Merrell Dow andPharms., Inc., 800 F.2d 1208, 1211 (D.C. Cir. 1986) (internal citations omitted) (“Considering an argument advanced for the first time in a reply brief... is not only unfair to appellee but also entails the risk of an improvident or ill-advised opinion on the legal issue tendered.”). Nonetheless, on this record, we further find the argument with the proffered evidence unpersuasive that there is a lack of enablement for the reason that it fails to squarely address the method set forth in Emoto except to note—without citation to Emoto—that it does not include the “spheronization step that occurs at a lower rotational velocity relative to a 10 Appeal 2016-004016 Application 13/933,918 rotational velocity of a preceding agglomeration step.” See generally Appeal Br.; Reply Br. We find this insufficient to rebut the presumption that Emoto is enabled. Antor Media, 689 F.3d 1282 at 1289. Thus, on this record, we find the Examiner’s prima facie case of obviousness as to claim 2 well-founded. Proffered Results to Rebut Prima Facie Case Appellants proffer advantages of the claimed invention and contend that the “satisfactory matching of the ‘toner’ and the ‘photoreceptor’ enables an unexpected suppression of toner smearing, scattering, memory or ghost images, imperfect solid images and dead dots—even after long-term operation and the use of low concentrations of the toner.” Appeal Br. 4-8, 17-20; see also Reply Br. 2-4. Appellants contend that “obtaining an image preferable in fogging and memory requires the combination (matching) of a particular oxytitanium phthalocyanine with a particular toner having a relatively lower average sphericity but in a limited range” and that this “combination was not understood at the time of the present invention.” Appeal Br. 8. Appellants cite paragraphs 23, 448^150 (encompassing Table 2), 5lb- 517 (encompassing Table 3), 571 (Table 4), and 627 (Table 6) of the Specification for support and further rely on paragraphs 4 and 5 of the Fujii Declaration11—citing paragraph 620 and Figure 6—for its explanation of significance of the memory effects results in Figure 6. Table 2 relates to Toners A-F, which are cited for the ability to obtain acceptable levels of 11 Declaration under 37 C.F.R. § 1.132 of Akiteru Fujii, dated December 16, 2014. 11 Appeal 2016-004016 Application 13/933,918 smearing in combination with photoreceptor 2, in contrast to comparative Toner G. Appeal Br. 5, 18-19; Spec. 448^150. Table 3 relates to Toners H-J, which are cited for the ability to reduce residual (ghost) images, thin spots, and cleaning properties, in contrast to comparative Toners L-N. Appeal Br. 6, 19; Spec. 516-517. Table 4 relates to the use of a single toner (Toner A) in combination with photoreceptors meeting the requirements of claim 2 (Examples 10-13), which provide good thin-line reproducibility, and with photoreceptors that do not (Comparative Examples 6-8), which provide bad thin-line reproducibility. Appeal Br. 6-7, 20; Spec. | 571. Appellants maintain that the difference in the photoreceptors according to claim 2 and the comparative photoreceptors is in the crystal form of the oxytitanium phthalocyanine. Appeal Br. 7, 20. Table 6 relates to the use of two inventive toners (denoted as Production Examples 8 and 10) with inventive photoreceptors as well as the use of these components with comparative photoreceptors and toner (denoted as Production Example 11) . Appeal Br. 7-8, 17-18; Spec. ^ 627. Appellants maintain Table 6 is evidence “that the claimed invention is significantly superior in terms of degree of memory phenomenon.” Appeal Br. 7. Having considered the proffered evidence, we do not find it sufficient to rebut the prima facie case. It is well established that Appellants bear the burden of showing that the claimed invention imparts unexpected results. In re Geisler, 116 F.3d 1465, 1470 (Fed. Cir. 1997); In re Klosak, 455 F.2d 1077, 1080 (CCPA 1972). To meet this burden, Appellants must show that the results actually would have been unexpected, and that the unexpected results are reasonably commensurate with the scope of protection sought by the claim on appeal. In re Grasselli, 713 F.2d 731, 743 (Fed. Cir. 1983); In 12 Appeal 2016-004016 Application 13/933,918 re Clemens, 622 F.2d 1029, 1035 (CCPA 1980); Klosak, 455 F.2d at 1080. Further, when relying on the criticality of the recited values, Appellants must establish that the particular range is critical. In re Woodruff, 919 F.2d 1575, 1578 (Fed. Cir. 1990) (“The law is replete with cases in which the difference between the claimed invention and the prior art is some range or other variable within the claims. ... in such a situation, the applicant must show that the particular range is critical, generally by showing that the claimed range achieves unexpected results relative to the prior art range.”). As to the results being unexpected, Appellants do not direct us to any statement in the Specification attesting to the unexpected nature of the results or to any persuasive evidence that the results would have been unexpected at the time of the invention. See generally Appeal Br.; Reply Br. The various contentions in the Appeal and Reply Briefs of a surprising discovery, of unexpected results, or that the combination of a particular photoreceptor and particular toner to obtain improved results was not understood are not sufficient to bear Appellants’ burden. See, e.g., Geisler, 116 F.3d at 1471 (“Geisler made no such assertion [that results were unexpected] in his application. Nor did Geisler submit any such statement through other evidentiary submissions, such as an affidavit or declaration under Rule 132 .. . Instead, the only reference to unexpected results was a statement by Geisler’s counsel. . . that Geisler’s results were ‘surprising.’”). Nor do we find in the Fujii Declaration a sufficient basis to establish that any of the results were unexpected, even had Appellants relied on it for that purpose. As to establishing the criticality of the matching of a particular photoreceptor and particular toner, Appellants have not established 13 Appeal 2016-004016 Application 13/933,918 criticality in the proffered evidence that a photoreceptor differing from the claimed photoreceptor results in lower quality images (Figures 4, 6). As to the ranges of requirements (l)-(4), we find the limited number of values insufficient to establish criticality of the recited ranges, particularly where the values outside the claimed range lie well outside the claimed range. In particular, Appellants rely on a toner particle having sphericity outside and above the claimed range having a sphericity of 0.981 (Appeal Br. 7, citing Production Example 11 in Table 6) and on toner particles having a number variation coefficient outside the claimed range having values of 24.5 and 25.6 (Appeal Br. 5-6; Table 2, Toner G) and Table 3, Toner N, respectively), and fail to direct us to further examples with values outside the ranges12 (see generally Appeal Br.; Reply Br.). As to the results, or evidence of criticality, being commensurate with the scope of the claims, Appellants’ position is unsupported on this record. As noted by the Examiner, “[t]he claims permit any toner . . . any values within requirements (l)-(4) as claimed” (Final Office Action issued February 25, 2015 (“Final Act.”), 4), but the proffered evidence is limited to core shell toners (id.; see also Ans. 15-16), which Appellants do not contest (see generally Appeal Br.; Reply Br.). As to Appellants’ apparent position that the composition and structure of the toner particles do not matter “[bjecause the effects of the claimed method are derived from the combination of average particle diameter, a particular amount of fine powder, and a particular oxytitanium phthalocyanine (OPC)” (Appeal Br. 12 Appellants contend that the average sphericity in Comparative Examples 32 and 33 in Table 6 are too low (Appeal Br. 7), however, the average sphericity is listed as 0.935 (Table 6), a value within the range recited in claim 2. 14 Appeal 2016-004016 Application 13/933,918 21-22), we find it unsupported on this record in the absence of persuasive evidence. In re Pearson, 494 F.2d 1399, 1405 (CCPA 1974) (“Attorney’s argument. . . cannot take the place of evidence.”). Further, as also well stated by the Examiner, the claims permit any number variation coefficient of 22.0% or less, but “[tjhere is no evidence for toners from 0% to just below 18.0%.” Final Act. 4. For these reasons, Appellants have not shown evidence of criticality that is commensurate with the scope of claim 2. See In re Harris, 409 F.3d 1339, 1343 (Fed. Cir. 2005) (holding that the applicant must show unexpected results covering the scope of the claimed range or narrow the claims). Turning to Appellants’ further contentions that the Examiner erred in relying on erroneous factual conclusions (Appeal Br. 21-23), we find them unpersuasive of reversible error. First, as to the Dns requirement (3) and the contention that the Examiner erred in “finding that it can be from 0% to 100% of 0.233EXP (17.3/Dv50)” (Appeal Br. 21), we find the Examiner’s clarification (see Ans. 17) sufficient and unrebutted by Appellants (see generally Reply Br.). Second, as to Appellants’ contention that the Examiner erred in finding Takeda teaches that narrowing particle size distribution can be used to provide uniform charge distribution that allows various asserted unexpected results (Appeal Br. 22-23), we find it of no import because it is the Appellants’ burden to establish unexpected results and that the obtained results are commensurate with the scope of the claims, not the Examiner’s burden to prove the contrary. As discussed above, the cited portions of the Specification—paragraphs 44 45, 51-53, 516—do not support Appellants’ position that the results were unexpected. Similarly, Appellants’ arguments as to the results being affected by the tank used 15 Appeal 2016-004016 Application 13/933,918 (Appeal Br. 23) are unpersuasive of harmful error because “the burden of showing that the error is harmful normally falls upon the party attacking the agency’s determination,” In re Chapman, 595 F.3d 1330, 1338 (Fed. Cir. 2010) (quoting Shinski v. Sanders, 556 U.S. 396, 409 (2009), and we find no sufficient basis to establish the error was harmful in Appellants’ argument. For the reasons set forth above, therefore, Appellants fail to provide that their evidence of unexpected results is sufficient to overcome the prima facie case of obviousness. Grasselli, 713 F.2d at 743. Separate Contentions of Patentability for Claims 3-6 and 8-9 As to claims 3 and 4, Appellants contend that the rejections should be reversed because “Emoto’s teaching at paragraph [0045]. . . fails to recognize the relationship needed to enable a person of ordinary skill in the relevant art to discover a toner satisfying” the required expressions (3-1) and (3-2) for claims 3 and 4, respectively, through routine experimentation. Appeal Br. 24. On this record, we are not persuaded of reversible error. In particular, we discern no cogent argument contesting the Examiner’s detailed determination that minimizing the value of Dv/Dn, particularly toward its lower bound of 1.00, would concomitantly lead to satisfying requirement (4). Cf Lovin, 652 F.3d at 1357. Further, Appellants’ argument fails to squarely address the rejection set forth by the Examiner grounded on what the collective teachings of Emoto, Xu, and Takeda would have suggested to a person of ordinary skill in the art, In re Keller, 642 F.2d 413, 425 (CCPA 1981), and, therefore, fails to explain why the artisan would not have been led to the claimed subject matter through no more than routine experimentation. 16 Appeal 2016-004016 Application 13/933,918 As to claim 5, Appellants contend that the rejection should be reversed because “Emoto’s teaching at paragraph [0045]. . . fails to recognize the relationship needed to enable a person of ordinary skill in the relevant art to discover a toner satisfying all of the requirements (1)—(4) through routine experimentation” and because of improved results grounded on Table 3. Appeal Br. 24-25. On this record, we discern no cogent argument contesting that the combination of references would have led the artisan to the subject matter of claim 5 through no more than routine experimentation as discussed above in relation to claim 2. Likewise, we also find Appellants’ proffered improved results fail to rebut the prima facie case for the reasons discussed above in relation to claim 2. As to claims 8-10, Appellants’ contentions are in substance no more than a statement of claim limitations and an assertion that they are not met, which do not rise to the level of separate argument for patentability.13 See Lovin, 652 F.3d at 1357; cf. In re Baxter Travenol Labs., 952 F.2d 388, 391 (Fed. Cir. 1991) (“It is not the function of this court to examine the claims in greater detail than argued by an appellant, looking for nonobvious distinctions over the prior art.”). On balance, the evidence of record weighs most heavily in favor of the Examiner’s conclusion of obviousness. 13 In the event of further prosecution, the Examiner should consider correcting the oversight of including claim 9 in the listing of claims subject to rejection over the combination of Gaims in view of Diamond, Emoto, Xu, and Takada rather than the combination further including Matsuda because claim 9 depends from claim 8 subject to rejection over the combination including Matsuda. 17 Appeal 2016-004016 Application 13/933,918 DECISION The Examiner’s decision rejecting claims 2-12 is AFFIRMED. No time period for taking any subsequent action in connection with this appeal may be extended under 37 C.F.R. § 1.136(a)(l)(iv). AFFIRMED 18 Copy with citationCopy as parenthetical citation