Ex Parte Aulick et al

Board of Patent Appeals and Interferences

Sep 27, 2002

09631765 (B.P.A.I. Sep. 27, 2002)

1 Application for patent filed August 3, 2000. According to
the official records of the United States Patent and Trademark
Office (PTO), this application is a division of application Serial
Number 09/058,395, filed on April 9, 1998, and now U.S. Patent
Number 6,165,280, issued on December 26, 2000.
1
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and is not binding precedent of the Board.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. 15
UNITED STATES PATENT AND TRADEMARK OFFICE
________________
BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
________________
Ex parte LARRY ORAL AULICK, GEORGE NICHOLAS POWERS
and MARK STEPHEN WEISMAN, JR.
________________
Appeal No. 2002-1838
Application 09/631,7651
________________
ON BRIEF
________________
Before METZ, GARRIS and MOORE, Administrative Patent Judges.
METZ, Administrative Patent Judge.
DECISION ON APPEAL
This is an appeal under 35 U.S.C. § 134 from the examiner's
refusal to allow claims 17 through 19 and 21 through 37, all the
claims remaining in the application.
THE INVENTION
The appealed subject matter is directed to an assembly useful
for cleaning toner resin from a printing device. The assembly
Appeal No. 2002-1838
Application 09/631,765
2
comprises a porous member, such as a polyurethane foam, impregnated
with a silicone copolymer paste, and a rigid member with a
supporting base on which the porous member is mounted, such as
cardboard. According to appellants, their assembly is an
inexpensive and effective means for removing toner which has leaked
in the printing device before it can accumulate in the printing
device and result in poor image quality.
Claims 17 through 19 are believed to be adequately
representative of the appealed subject matter and are reproduced
below for a more facile understanding of the claimed invention:
Claim 17. An assembly for cleaning a toner resin from
components of a printing device, comprising:

a porous member impregnated with a paste comprising a silicone
copolymer, and

a rigid member with a supporting base on which said porous
member is mounted.

Claim 18. The assembly as in Claim 17, wherein said silicone
copolymer has a polydimethylsiloxane moiety and an alkyl
substituted polydimethylsiloxane moiety.

Claim 19. The assembly as in Claim 17, wherein said silicone
copolymer has the formula

CH3 CH3
CH3 Si-O Si-O Si(CH3)3

CH3 x R y

Appeal No. 2002-1838
Application 09/631,765
3
wherein x represents from about 98.8 molar percent to
about 99.5 molar percent, y represents from about 0.5
molar percent to about 1.2 molar percent and R comprises
from about 70% by weight to about 100% by weight of a
C15-C60 alkyl group and from about 0% to about 30% by
weight of a C2-C14 alkyl group.
THE REFERENCES
The references of record which are being relied on by the
examiner as evidence of obviousness are:
Latone 3,980,424 September 14, 1976
Peilet 4,184,279 January 22, 1980
Dowlen et al. 5,880,244 March 9, 1999

British Patent Number 1,330,227, General Tire, published September
12, 1973.
THE REJECTIONS
Claims 17 through 19, 21, 25 and 27 through 37 stand rejected
as being unpatentable under 35 U.S.C. § 103 from the disclosure of
Latone considered with Dowlen et al. Claims 22 through 24 stand
rejected as being unpatentable under 35 U.S.C. § 103 from the
disclosure of Latone considered with Dowlen et al. in further view
of Peilet. Claim 26 stands rejected as being unpatentable under 35
U.S.C. § 103 from the disclosure of Latone considered with Dowlen
et al. in further view of General Tire.
OPINION
We begin by observing that each of the examiner's proffered
rejections is founded on the combination of Latone considered with
Dowlen, either alone or in view of certain other prior art (Peilet
Appeal No. 2002-1838
Application 09/631,765
4
and General Tire). Thus, it is apparent that the stated rejections
stand or fall on the propriety of the rejection over Latone
considered with Dowlen et al. Accordingly, we shall first consider
the examiner's rejection of the claims over the combination of
Latone considered with Dowlen et al.
We begin by determining the scope and content of appellants'
claims because it is the claims which define the protection for
which appellants seek a patent. United Carbon Co. v. Binney & Smith
Co., 317 U.S. 228, 232, 55 USPQ 381, 383-384 (1942) (citing General
Electric Co. v. Wabash Appliance Corp., 304 U.S. 364, 369, 37 USPQ
466, 468-469 (1938); In re Zletz, 893 F.2d 319, 321, 322, 13 USPQ2d
1320, 1322 (Fed. Cir. 1989); SRI Int'l. v. Matsushita Elec. Corp.,
775 F.2d 1107, 1121, 227 USPQ 577, 586 (Fed. Cir. 1985) (en banc).
Claim 17, appellants' only independent claim is directed to
"an assembly for cleaning a toner apparatus" and the assembly is
defined as one "comprising" two elements: a porous member
impregnated with a paste comprising a silicone copolymer; and, a
rigid member with a supporting base on which said porous member is
mounted. According to appellants' specification, the first element,
the "porous member", is preferably a low density urethane foam. See
page 6, lines 24 through 26 and Figure 2, element 14. Useful
properties for the foam are described at page 7, lines 8 through 11
of the specification. The "paste comprising a silicone copolymer"
is described at page 4, line 8 through page 5, line 4 and page 8,
Appeal No. 2002-1838
Application 09/631,765
5
line 3 through page 10, line 9 of the specification. At page 8,
lines 6 and 7, appellants disclose that the impregnating compound
"has a paste or caulk-like consistency." The terminology "paste" is
not otherwise defined in the specification. The second element, the
"rigid member with a supporting base", is disclosed as preferably
formed of cardboard to which the foam pad is adhesively attached.
See page 6, lines 26 through 28 of the specification and Figure 2,
element 16. Cardboard having a thickness of one eighth of an inch
(1/8") has been determined to be sufficient to furnish rigidity to
and support the porous member. See page 7, lines 12 through 15 of
the specification.
Accordingly, claim 17 embraces a porous material, preferably
a polyurethane foam, supported by a supporting base, preferably
cardboard, and preferably adhesively attached to the base and a
rigid member supporting the foam. The porous member is impregnated
with a paste which comprises a silicone copolymer but claim 17 does
not describe the component comonomers.
We agree with the examiner that Latone discloses an assembly
for cleaning toner resins from components of a printing device. The
assembly comprises a porous member (see element 103 of the
"cleaning roll" depicted in Figure 4) and a rigid member with a
supporting base on which said porous member is mounted (see element
101 in Figure 4). Latone also describes the preferred material for
the porous member as "urethane foam" (see column 5, lines 3 through
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Application 09/631,765
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4). Latone discloses that the urethane foam may be impregnated with
"silicone oil" to facilitate adhesion of the toner material to the
urethane foam sleeve. The examiner recognizes that the silicone oil
disclosed by Latone is not described as "a paste comprising a
silicone oil."
The examiner relies on the disclosure of Dowlen et al.,
assigned to Lexmark International, Inc., the assignee of the real
party in interest of this application, for the disclosure of the
specific, preferred silicone copolymers used by appellants as the
"paste comprising a silicone polymer" for impregnating the porous
member in claim 17. The examiner reasons that it would have been
obvious:
to have provided for a silicone oil copolymer in Latone in
order to utilize its heat stability as taught by Dowlen et
al., ('424) and to have provided for the copolymer formulated
as a paste in order to make it easier to apply as taught by
Dowlen et al. ('424).
For reasons which follow, we shall reverse this rejection.
In the first instance, Latone does not provide for
impregnating the urethane foam with a "paste comprising a silicone
copolymer" but only, generically, provides for a silicone oil as
useful. There is neither any other description in Latone of useful
"silicone oils" nor any guidance whatsoever provided in Latone for
how to select useful "silicone oils" save for their useful property
of facilitating adhesion of toner to the roller. Dowlen et al., on
the other hand, discloses that silicone oils are "typically used to
Appeal No. 2002-1838
Application 09/631,765
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prevent toner from adhering to the surface of the fuser roll and
thereby degrading image quality and contaminating the fuser
surface" (see column 1, line 64 through column 2, line 2, emphasis
added).
Thus, Dowlen et al. is describing the function of a release
agent, that is, a compound which prevents toner from adhering to a
surface rather than a compound for which the toner particles have
an affinity and to which they adhere. Further, Dowlen et al. also
addresses the problem that conventional silicone oil release agents
were known to contaminate the paper passing through the printer and
damage the image quality and contaminate other printing machine
surfaces. Dowlen et al. resolved both these problems by using as
the release agent a random silicone copolymer as defined by the
formulae at column 4, lines 8 through 27; column 5, line 8 through
column 6, line 18; column 6, line 49 through column 7, line 18.
The copolymers are described in Dowlen et al. as having "a
paste or caulk-like consistency" and exhibit the property of being
a liquid on the heated fuser roll surface but a solid as they cool
on the print surface of the paper (column 4, lines 1 through 5;
lines 30 through 39). The copolymers comprise a "silicone oil" and
a "silicone wax" portion (column 5, lines 1 through 8). Random
silicone copolymers as claimed in appellants' claim 19 are set
forth in column 6, line 49 through column 7, line 18 but those
copolymers are disclosed as useful sealants for toner cartridges to
Appeal No. 2002-1838
Application 09/631,765
8
prevent toner leakage.
The examiner has simply failed to supply any evidence which
establishes that a person of ordinary skill in the art would have
been motivated to use the particular silicone copolymers of Dowlen
et al., taught as useful release agents or toner cartridge
sealants, as the silicone oil for impregnating the urethane foam in
Latone. The examiner's reference to the disclosure in Dowlen et al.
that the paste or caulk-like silicone copolymers are easy to apply
and do not migrate ignores that said disclosure is in the context
of using the copolymers as toner cartridge sealants. When used as
a toner cartridge sealant, the copolymers are not impregnated on a
porous member (see column 7, lines 19 through 31). While Dowlen et
al. discloses a pad comprising a felt pad having an effective
amount of the release agent thereon for dispensing the release
agent on the hot fuser roller, the pad is not disclosed as having
a rigid member with a supporting base on which the porous member is
mounted as required by claim 17.
Accordingly, we conclude that the examiner has failed to make
out a prima facie case of obviousness based on the combination of
Latone considered with Dowlen et al. Because all the examiner's
rejections rely on the combination of Latone with Dowlen t al., we
shall reverse all the examiner's rejections.
Appeal No. 2002-1838
Application 09/631,765
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SUMMARY
The rejections of the claims under 35 U.S.C. § 103 is
reversed. The decision of the examiner is reversed.
REVERSED
ANDREW H. METZ )
Administrative Patent Judge )
)
)
)
)
BRADLEY R. GARRIS )BOARD OF PATENT
Administrative Patent Judge ) APPEALS AND
)INTERFERENCES
)
)
)
JAMES T. MOORE )
Administrative Patent Judge )
AHM/gjh
Appeal No. 2002-1838
Application 09/631,765
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LEXMARK INTERNATIONAL, INC.,
INTELLECTUAL PROPERTY LAW DEPARTMENT
740 WEST NEW CIRCLE ROAD, BLDG. 082-1
LEXINGTON, KY 40550-0999