13118021 - (D) (P.T.A.B. Aug. 29, 2019)

Brian P. Gilmartin et al.

Patent Trials and Appeals BoardAug 29, 2019

13118021 - (D) (P.T.A.B. Aug. 29, 2019)

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. 13/118,021 05/27/2011 Brian P. GILMARTIN 20101199-US- NP(0010.0265) 8789 74708 7590 08/29/2019 MH2 TECHNOLOGY LAW GROUP, LLP Customer No. with Xerox Corporation 1951 KIDWELL DRIVE SUITE 310 TYSONS CORNER, VA 22182 EXAMINER SHAH, SAMIR ART UNIT PAPER NUMBER 1787 NOTIFICATION DATE DELIVERY MODE 08/29/2019 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): docketing@mh2law.com doreen@mh2law.com office.action@xerox.com PTOL-90A (Rev. 04/07) UNITED STATES PATENT AND TRADEMARK OFFICE ____________ BEFORE THE PATENT TRIAL AND APPEAL BOARD ____________ Ex parte BRIAN P. GILMARTIN, LIANG-BIH LIN, JEANNE M. KOVAL, JIN WU, and AARON M. STUCKEY ____________ Appeal 2017-011763 Application 13/118,021 Technology Center 1700 ____________ Before MONTÉ T. SQUIRE, JEFFREY R. SNAY, and BRIAN D. RANGE, Administrative Patent Judges. SNAY, Administrative Patent Judge. DECISION ON APPEAL1 Appellants2 appeal under 35 U.S.C. § 134(a) from the Examiner’s decision rejecting claims 1, 4–10, 19–26, and 28–30. We have jurisdiction under 35 U.S.C. § 6(b). We reverse. 1 We cite to the Specification (“Spec.”) filed May 27, 2011; Final Office Action (“Final Act.”) dated December 7, 2016; Appellants’ Appeal Brief (“Appeal Br.”) filed April 19, 2017; Examiner’s Answer (“Ans.”) dated July 27, 2017; and Appellants’ Reply Brief (“Reply Br.”) filed September 20, 2017. 2 Appellants identify Xerox, Corp. as the real party in interest. Appeal Br. 2. Appeal 2017-011763 Application 13/118,021 2 BACKGROUND The subject matter on appeal relates to a protective overcoat provided on an electrostatic charging member, such as a bias charge roller (“BCR”). Spec. ¶¶ 1, 18. When used in an electrophotographic printing apparatus, the charging member contacts and charges a photosensitive member. Id. ¶ 3. According to the Specification, the protective overcoat improves mechanical strength of the charging member while retaining the resistivity and charge uniformity necessary for optimal charging performance. Id. ¶ 48. Claim 1 is illustrative of the subject matter on appeal: 1. An electrostatic charging member comprising: a conductive substrate; a base layer disposed over the conductive substrate, the base layer comprising an elastomeric material and a semiconductive material; and a protective outer layer disposed over the base layer, the protective outer layer comprising a polymeric resin and a plurality of conductive particles, the plurality of conductive particles being selected from the group consisting of tin oxide, indium oxide, titanium oxide, doped metal oxides, metal alloys, conductive polymers, and combinations thereof, wherein the outer protective layer has a surface resistivity ranging from about 105 Ω/sq to about 1013 Ω/sq; and wherein the polymeric resin is selected from the group consisting of polyester, phenolic resins, aminoplast resins; and combinations thereof, wherein if the polymeric resin includes a polyester, the polyester is a thermoplastic polycaprolactone; wherein if the polymeric resin includes a phenolic resin, the phenolic resin is a condensation product of an aldehyde with a phenol source in the presence of an acidic or basic catalyst, the phenolic resin being optionally modified with a plasticizer; and Appeal 2017-011763 Application 13/118,021 3 wherein if the polymeric resin includes an aminoplast resin, the aminoplast resin is made from ingredients comprising a nitrogen-containing substance and formaldehyde, the nitrogen-containing substance being chosen from one of urea, benzoguanamine and glycoluril, the aminoplast resin being optionally alkylated, and the aminoplast resin being optionally modified with a plasticizer. App. Br. 22–23 (Claims Appendix). Claims 19 and 21 also are independent and include essentially the same recitations as claim 1. Each remaining claim on appeal depends from claim 1, 19, or 21. REJECTIONS I. Claims 1, 4–10, and 19–21 stand rejected under 35 U.S.C. § 103 as unpatentable over Tarnawskyj (US 6,620,476 B2; issued Sept. 16, 2003), Mammino (US 6,103,815; issued Aug. 15, 2000), and Qi (US 2007/0087277 A1; published Apr. 19, 2007). II. Claims 21 and 22 stand rejected under 35 U.S.C. § 103 as unpatentable over Tarnawskyj and Qi. III. Claims 23–26 and 28–30 stand rejected under 35 U.S.C. § 103 as unpatentable over Tarnawskyj, Qi, and Miyashita (US 5,248,553; issued Sept. 28, 1993). OPINION Each rejection on appeal is premised on the Examiner’s findings that Tarnawskyj discloses a BCR having a polyamide protective overcoat and Qi discloses a phenolic resin BCR overcoat. Final Act. ¶¶ 4, 9, 15, 17. Particularly, the Examiner finds that “Qi discloses a bias charging roll Appeal 2017-011763 Application 13/118,021 4 comprising [an] overcoat layer [which] comprises phenolic resin.” Id. ¶ 9 (citing Qi ¶¶ 7, 104). Based on that finding, the Examiner determines it would have been obvious to “use the phenolic resin of Qi in the outer layer of Tarnawskyj.” Id. ¶ 10. A dispositive issue in this case is whether the Examiner erred in finding that Qi would have provided a reason to use phenolic resin in Tarnawskyj’s charging member overcoat. Compare Final Act. 3 (“It would have been obvious . . . to use the phenolic resin of Qi in the outer layer of Tarnawskyj to obtain extended wear characteristics, excellent image quality and to exhibit mechanical robustness.”) with, App. Br. 8 (“[T]here is no teaching by Qi of employing such a material as an overcoat for a BCR.”). The evidence favors Appellants’ argument. As Appellants correctly point out (Appeal Br. 7), Qi teaches overcoat compositions for a photoconductive imaging member, not a charging member. See Qi ¶¶ 2–4 (characterizing the disclosed invention as a photoconductive imaging member having a phenol overcoat). The Examiner’s reliance on paragraph 7 in Qi with regard to a charging member is misplaced. There, Qi merely identifies bias charging rolls as a cause of wear on a photoimaging member. Qi ¶ 7 (“[T]he microcorona generated by the BCR during charging damages the photoreceptor, resulting in rapid wear of the imaging surface.”). Thus, Qi provides a protective overcoat on the photoimaging member to “achieve excellent image quality and mechanical robustness.” Id. ¶ 19. The Examiner points to no passage in Qi that regards a charging member having a protective coating—much less the particular protective coating that Qi provides on the photoimaging member. Nor does the Examiner provide evidence that one skilled in the art would have viewed Appeal 2017-011763 Application 13/118,021 5 Qi’s photoimaging member coating as useful for coating a charging member.3 We are persuaded that the Examiner’s finding that Qi discloses a phenol coating for use on a bias charging member lacks evidentiary support. Because the Examiner provides no other reason why one skilled in the art would have had a reason to use Qi’s phenol composition in Tarnawskyj’s charging member overcoat, we do not sustain the Examiner’s obviousness determinations set forth in Rejections I–III. DECISION The Examiner’s decision rejecting claims 1, 4–10, 19–26, and 28–30 is reversed. REVERSED 3 The Examiner responds that Qi pertains generally to problems of image quality and robustness that are reasonably pertinent to those addressed by the claimed invention. Ans. 2. Whether a reference is reasonably pertinent to an inventor’s problem relates to a threshold question as to whether that reference may be considered available as analogous art. It does not, however, suffice to provide a reason why one of ordinary skill would have applied the teachings of a reference to modify another.