Ex Parte Aoki

Board of Patent Appeals and Interferences

Feb 22, 2011

11046732 (B.P.A.I. Feb. 22, 2011)

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.
11/046,732 02/01/2005 Momomi Aoki BJS-1035-569 3797
23117 7590 02/22/2011
NIXON & VANDERHYE, PC
901 NORTH GLEBE ROAD, 11TH FLOOR
ARLINGTON, VA 22203
EXAMINER
WONG, JOSEPH S
ART UNIT PAPER NUMBER
2852
MAIL DATE DELIVERY MODE
02/22/2011 PAPER
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.
PTOL-90A (Rev. 04/07)

UNITED STATES PATENT AND TRADEMARK OFFICE
________________
BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
________________

Ex parte MOMOMI AOKI
________________

Appeal 2009-007343
Application 11/046,732
Technology Center 2800
_________________

Before CARLA M. KRIVAK, THOMAS S. HAHN, and
BRADLEY W. BAUMEISTER, Administrative Patent Judges.

HAHN, Administrative Patent Judge.

DECISION ON APPEAL1
Appellant invokes our review under 35 U.S.C. § 134(a) from the final
rejection of claims 1-4 and 6-13. We have jurisdiction under 35 U.S.C.
§ 6(b). We affirm.

1 The two-month time period for filing an appeal or commencing a civil
action, as recited in 37 C.F.R. § 1.304, or for filing a request for rehearing,
as recited in 37 C.F.R. § 41.52, begins to run from the “MAIL DATE”
(paper delivery mode) or the “NOTIFICATION DATE” (electronic delivery
mode) shown on the PTOL-90A cover letter attached to this decision.
Appeal 2009-007343
Application 11/046,732

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STATEMENT OF THE CASE
Introduction
Appellant claims an electro-photographic image developing apparatus
that uses a developer material, which includes toner. The apparatus has a
container for the developer, and attached to the container is a controlling
blade for regulating the amount of developer supplied to a supporting body.
The region of the controlling blade that contacts the toner has a composite
plated film containing spherical shaped fine particles of fluorocarbon resin.2
Illustrative independent claim 1, with disputed recitations italicized, reads as
follows:
1. A developing apparatus, comprising:
a container for containing developer including toner;
a developer supporting body, which is elastic and provided so as to
contact an image supporting body, for supplying the developer to the
image supporting body; and
a developer amount controlling blade, which is attached to the
container so as to contact the developer supporting body, for
controlling an amount of developer supplied,
the developer amount controlling blade having, at least in a region
that contacts the toner, a composite plated film containing fine
particles of fluorocarbon resin, wherein the blade has an L-shape,
and the fine particles of fluorocarbon resin contained in the
composite plated film have a spherical shape.

2 See generally Spec. 5:7 – 15:22; Figs. 1-2.
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Rejection on Appeal
Claims 1-4 and 6-13 stand rejected under 35 U.S.C. § 103(a) as
unpatentable over Ozeki (JP 10-14934), Fukuzawa (JP 2001-194896), and
Yu (US 6,303,254 B1) (Final Action 2-8).
Appellant’s Contentions
Appellant asserts that claims 1-4 and 6-13 are collectively patentable
without identifying a separate claim for argument (Br. 10-22). We,
accordingly, select sole independent claim 1 as representative for the group
pursuant to our authority under 37 C.F.R. § 41.37(c)(1)(vii).
Appellant contends that “the cited prior art did not suggest to those of
. . . ordinary skill in the art that they should make the claimed device; and
that the cited prior art would not have revealed that in so making, those of
ordinary skill would have a reasonable expectation of success” (Br. 14). The
claimed elements asserted by Appellant as not being taught or suggested by
the cited prior art are a controlling blade having a composite plated film
containing spherical shaped fine particles of fluorocarbon resin (Br. 10-11).
Issue on Appeal
Did the Examiner err in rejecting representative claim 1 as being
obvious because Ozeki, Fukuzawa, and Yu, alone or in combination, fail to
teach or suggest the recited controlling blade having a composite plated film
containing spherical shaped fine particles of fluorocarbon resin?

PRINCIPLES OF LAW
The Supreme Court has held that 35 U.S.C. § 103 forbids issuance of
a patent for claimed subject matter that “‘simply arranges old elements with
each performing the same function it had been known to perform’ and yields
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Application 11/046,732

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no more than one would expect from such an arrangement, the combination
is obvious.” KSR Int’l Co. v. Teleflex Inc., 550 U.S. 398, 417 (2007)
(citation omitted). The Court also explained that “when a patent claims a
structure already known in the prior art that is altered by the mere
substitution of one element for another known in the field, the combination
must do more than yield a predictable result.” Id. at 416 (citation omitted).
Additionally, our reviewing court, in the instance of obviousness
rejections over combined references, has directed that “[n]on-obviousness
cannot be established by attacking references individually where the
rejection is based upon the teachings of a combination of references.” In re
Merck & Co., Inc. 800 F.2d 1091, 1097 (Fed. Cir. 1986) (citation omitted).

ANALYSIS
We have analyzed the Examiner’s rejection in light of Appellant’s
arguments (Br. 10-22), and we disagree with Appellant’s conclusions.
The rejection of representative claim 1 (Final Action 2-4, 6, and 7), in
relevant part for this appeal, arises from the Examiner’s finding that Ozeki
teaches “a developer regulating blade (3) including fluorocarbon resin (5)
for preventing fusion of the developer to the blade (see English abstract)”
(Ans. 11). The Examiner acknowledges, however, that Ozeki does not
disclose that “the developer fusing prevention layer (5) is composed [of] a
composite plated film containing fine particles of spherically shaped
fluorocarbon resin” (Ans. 4). From Fukuzawa, the Examiner finds
disclosure for
a developer regulating blade (1) including fluorocarbon resin
for preventing fusion of the developer to the blade, and further
disclos[ure that] the fluorocarbon resin particles [are] being
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included in a composite plated layer to resist corrosion and
prevent fusion of developer thereto for a long period of time
(English translation of Fukuzawa et al. – paragraph 7)
(Ans. 11). Using these findings the Examiner reasons that:
Fukuzawa et al. performs the same function as the resin layer of
Ozeki et al. in terms of preventing fusion of developer to the
blade, and has the additional advantages of corrosion resistance
and long life expectancy (English translation of Fukuzawa et al.
– paragraph 7). Therefore use of a [Fukuzawa] composite
plated film is not contrary to Ozeki, but rather is an
improvement thereof. (Id).
Finally, the Examiner acknowledges that Ozeki and Fukuzawa “are
silent with regards to the shape . . . of the fluorocarbon resin and thus do not
specifically teach that the fine particles of fluorocarbon resin have a
spherical shape” (Ans. 7). Turning to Yu, the Examiner finds that “fine
particles of fluorocarbon resin having a spherical shape (fig. 5, item 56; as
described at least in col. 8, line 45 – col. 9 line [59])” are taught (Ans. 8).
With this finding, the Examiner reasons that:
It would have been obvious to one of ordinary skill in the art at
the time the invention was made to specify that the shape of the
fluorocarbon resin particles disclosed by Ozeki et al. (JP 10-
142934) and Fukuzawa et al. (JP 2001-194896), have a spherical
shape as taught by Yu et al. (US 6303254) for the purpose of
further reducing friction (as described by Fukuzawa’s attempt to
reduce frictional heat by using fluorocarbon resin particles
[Fukuzawa et al, Abstract - “Problem to be solved”] and Yu et
al. identifying the dry lubricating advantages of spherical PTFE
[polytetrafluoroethylene] fluorocarbon particles [col. 8, line
[59]]).
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(Id.). Based on our reviews of Ozeki, Fukuzawa, Yu, and the record, we
agree with and adopt the Examiner’s above identified findings and reasons
for combining the references.
Appellant asserts arguments that (i) “use of a composite plated film is
contrary to Ozeki which specifically teaches a resin coating” (Br. 15) and (ii)
Yu “does not teach or suggest a . . . controller blade having . . . a composite
plated film containing fine particles of fluorocarbon resin . . . hav[ing] a
spherical shape” (Br. 17). The Examiner, as addressed supra, does not rely
on Ozeki or Yu for the teachings or suggestions asserted by Appellant as
being absent, but instead the Examiner relies on teachings from the other
cited references for the combined elements. Accordingly, we disagree with
Appellant because an obviousness rejection based on combined references
cannot be overcome by individually attacking the references, but by
addressing the combined teachings. Merck at 1097.
Appellant also argues that Fukuzawa is silent as to particle shape
despite the Examiner’s citation to paragraphs [0011] and [0017] of the
reference (Br. 17). In contradistinction, we find the Examiner acknowledges
that Ozeki and Fukuzawa “are silent with regards to the shape of the . . .
fluorocarbon resin [particles]” (Final Action 6, see also Ans. 7, 13).3 As
reproduced supra, the Examiner finds Yu teaches use of spherical particle
shapes and advantages achieved with use of spherical shapes, e.g., dry
lubrication (Final Action 7). Appellant does not dispute the Examiner’s

3 It is explained in the Examiner’s Answer, which is not responded to by
Appellant, that Appellant is referencing a “rejection regarding the term
‘diameter’ [that] was made in the Final Rejection dated 12/22/06 and was
withdrawn in the Non-Final Rejection dated 3/28/07. The above rejection
remained withdrawn in the Final Rejection dated 8/13/07 and is still
presently withdrawn” (Ans. 9).
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findings from Yu, but instead contends Yu’s spherical particles are taught as
being utilized in an anti-curl backing layer and optionally in an adhesion
promoting polymer (see, col. 7, l. 56 – col. 8, l. 26), and are not utilized in a
composite plated film on a developer controlling blade (Br. 17-18). We find
Appellant’s argument unavailing. As is reproduced supra, the Examiner did
not rely on Yu for the elements Appellant contends are not taught or
suggested. In particular, we agree that the Examiner’s findings and
reasoning establish obviousness through the combination of old elements,
including Yu’s dry lubricating spherical particles, performing their known
functions so as to yield no more than what one would expect from such an
arrangement. KSR at 417. We find no evidence of record showing that the
Examiner’s combination would yield an unexpected result, or that the
improvement would not be recognized or could not be implemented by an
ordinarily skilled artisan.
We will sustain the rejection of representative claim 1 along with the
respective dependent claims 2-4 and 6-13.

CONCLUSIONS
1. The Examiner did not err in rejecting representative independent
claim 1 as being obvious over the combination of Ozeki, Fukuzawa,
and Yu.
2. Claims 1-4 and 6-13 are not patentable.

ORDER
The Examiner’s decision rejecting claims 1-4 and 6-13 is affirmed.
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Application 11/046,732

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No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. § 1.136(a)(1)(iv) (2010).

AFFIRMED

kis
NIXON & VANDERHYE, PC
901 NORTH GLEBE ROAD, 11TH FLOOR
ARLINGTON, VA 22203