Ex parte Akutsu et al.

Board of Patent Appeals and Interferences

Apr 18, 2001

08700578 (B.P.A.I. Apr. 18, 2001)

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The opinion in support of the decision being entered
today was not written for publication and is not
binding precedent of the Board.
Paper No. 23
UNITED STATES PATENT AND TRADEMARK OFFICE
________________
BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
________________
Ex parte EIICHI AKUTSU, HIROSHI TAKAYAMA, SHIGEHITO ANDO,
KENJI OGI and YASUHIRO UEHARA
________________
Appeal No. 1998-2215
Application 08/700,578
________________
ON BRIEF
________________
Before GARRIS, WARREN and OWENS, Administrative Patent Judges.
OWENS, Administrative Patent Judge.
DECISION ON APPEAL
This is an appeal from the examiner’s final rejection of
claims 1-8, 10-15 and 19-24, which are all of the claims
remaining in the application.
THE INVENTION
The appellants’ claimed invention is directed toward a
device for heating and fixing a toner image in an image
Appeal No. 1998-2215
Application 08/700,578
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forming apparatus such as a copy machine or a printer, and to
a fixing apparatus which uses this device. Claim 1, which is
directed toward the heating and fixing device, is
illustrative:
1. A heat generating medium for image fixing,
comprising:
an electrically and thermally conductive support layer
having a thickness of greater than or equal to 3 µm;
an adhesion prevention layer formed on a surface of said
conductive support layer; and
a heat generating layer having a thickness of less than
or equal to 20 µm formed on another surface of said conductive
support layer.
THE REFERENCE
Akutsu et al. (Akutsu) 5,151,719 Sep. 29, 1992
THE REJECTION
Claims 1-8, 10-15 and 19-24 stand rejected under 35
U.S.C. § 103 as being unpatentable over Akutsu.
OPINION
We reverse the aforementioned rejection. We need to
address only claim 1, which is the broadest claim.
Akutsu discloses a heat generating medium for image
Appeal No. 1998-2215
Application 08/700,578
As correctly pointed out by the appellants (brief,1
page 9), Akutsu does not refer to the conductive layer as a
support layer.
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fixing which comprises an electrically and thermally
conductive layer (5) having a thickness of 1,200 D (0.12 µm),
an adhesion prevention layer formed on a surface of the
conductive layer and
having a thickness of 0.05-7 µm, preferably 0.1-1 µm, and a
heat generating layer having a thickness of 0.3-150 µm formed
on another surface of the conductive layer (col. 2, lines 39-
63; col. 3, lines 62-67; col. 6, lines 48-50 and 65-68). A
wear-resistant contact resistance layer (8), which preferably
is electrically discontinuous in its longitudinal direction,
can be formed on the heat generating layer to prolong the life
of the device (col. 6, lines 9-15; col. 7, lines 1-9; figure
2).
The examiner argues that “Akutsu shows one example which
includes a 50 micron thick heat generating layer and a
0.12 micron thick conductive support layer , but later states[1]
Appeal No. 1998-2215
Application 08/700,578
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that the heat generating layer can be as thin as 0.3 microns
thick, which would suggest to the artisan that the conductive
support layer should be thickened proportionally to the
reduction in thickness of the heat generating layer to provide
adequate strength for the finished laminate” (answer, page 7).
The examiner also argues: “The adhesion prevention layer is no
more than 7 microns, preferably no more than 1 micron (col. 6,
lines 49-50). Since the [sic] both the heat generating layer
and
the adhesion prevention layer are extremely thin, the
structural
integrity of the final laminate would necessarily be provided
by the conductive support layer” (answer, page 9).
In order for a prima facie case of obviousness to be
established, the teachings from the prior art itself must
appear to have suggested the claimed subject matter to one of
ordinary skill in the art. See In re Rinehart, 531 F.2d 1048,
1051, 189 USPQ 143, 147 (CCPA 1976). The mere fact that the
prior art could be modified as proposed by the examiner is not
Appeal No. 1998-2215
Application 08/700,578
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sufficient to establish a prima facie case of obviousness.
See In re Fritch, 972 F.2d 1260, 1266, 23 USPQ2d 1780, 1783
(Fed. Cir. 1992).
Akutsu does not disclose that there are any layer
thickness requirements for maintaining the structural
integrity of the laminate. Moreover, even if one of ordinary
skill in the art would have expected a structural integrity
problem to be caused by using Akutsu’s adhesion preventing
layer or electric heating layer minimum thicknesses of,
respectively, 0.05 Fm and 0.3 Fm (col. 6, lines 49 and 67),
there is no indication in the reference that such a person
would maintain the structural integrity by increasing the
thickness of the 0.12 Fm conductive
layer rather than using a greater thickness of one of the
adhesion preventing layer and electric heating layer, which
have disclosed maximum thicknesses of, respectively, 7 Fm and
150 Fm (col. 6, lines 49 and 67), or using a contact
resistance layer. The record indicates that the motivation
relied upon by the examiner for using Akutsu’s conductive
Appeal No. 1998-2215
Application 08/700,578
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layer as a support layer and increasing its disclosed
thickness by a factor of 25 to arrive at the claimed invention
comes from the appellants’ disclosure rather than the applied
reference and that, therefore, the examiner used impermissible
hindsight when rejecting the claims. See W.L. Gore &
Associates v. Garlock, Inc., 721 F.2d 1540, 1553, 220 USPQ
303, 312-13 (Fed. Cir. 1983), cert. denied, 469 U.S. 851
(1984); In re Rothermel, 276 F.2d 393, 396, 125 USPQ 328, 331
(CCPA 1960). Accordingly, we reverse the examiner’s
rejection.
DECISION
The rejection of claims 1-8, 10-15 and 19-24 under 35
U.S.C. § 103 over Akutsu is reversed.
Appeal No. 1998-2215
Application 08/700,578
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REVERSED
BRADLEY R. GARRIS )
Administrative Patent Judge )
)
)
)
CHARLES F. WARREN ) BOARD OF PATENT
Administrative Patent Judge ) APPEALS AND
) INTERFERENCES
)
)
TERRY J. OWENS )
Administrative Patent Judge )
TJO/ki
Appeal No. 1998-2215
Application 08/700,578
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