Ex Parte Badesha et al

Board of Patent Appeals and Interferences

Nov 13, 2006

09737413 (B.P.A.I. Nov. 13, 2006)

The opinion in support of the decision being entered today was not written
for publication and is not binding precedent of the Board.

UNITED STATES PATENT AND TRADEMARK OFFICE
____________

BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
____________

Ex parte SANTOKH S. BADESHA and
EDWARD L. SCHLUETER, JR.
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Appeal 2006-1593
Application 09/737,413
Technology Center 1700
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Decided: November 13, 2006
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Before KIMLIN, KRATZ, and LINCK, Administrative Patent Judges.
KRATZ, Administrative Patent Judge.

DECISION ON APPEAL
This is an appeal from the Examiner’s final rejection of claims 1-21.
We have jurisdiction pursuant to 35 U.S.C. § 134.

Appeal 2006-1593
Application 09/737,413

Appellants’ invention relates to a transfix member, and an image
forming apparatus, such as a printing machine, that includes such a transfix
component (Specification 1). According to Appellants, “a transfix or
transfuse member uses heat associated with the transfer member in order to
both transfer and fix or fuse the developed image to a copy substrate”
(Specification 2). Appellants’ transfix component device is disclosed as
including a substrate or core, an optional intermediate layer and an outer
layer including a delaminated nanocomposite. The delaminated
nanocomposite is said to be made from a silicone elastomer and a mica-type
layered silicate employed in the outer layer (Specification 7-8). Appellants
provide that a heating source (member) can be associated with the transfix
substrate (Specification 11). Claim 20 is illustrative and reproduced below:
20. A transfix member comprising:
a) a transfix substrate, and thereover
b) a conformable intermediate layer comprising a
polymeric material, and having thereron
c) an outer transfix layer comprising a mica-type layered
silicate and silicone elastomer, said silicone elastomer
and said mica-type layered silicate together forming a
delaminated nanocomposite, and
d) a heating member associated with said transfix substrate.
The Examiner relies on the following prior art references as evidence
in rejecting the appealed claims:
Badesha ‘643 US 5,846,643 Dec. 8, 1998
Swift US 6,381,436 Apr. 30, 2002
Badesha ‘504 US 6,482,504 Nov. 19, 2002
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Appeal 2006-1593
Application 09/737,413

Claims 1-10 and 13-21 stand rejected under 35 U.S.C. § 103(a) as
being unpatentable over Badesha ‘643 in view of Swift. Claims 1-17, 20
and 21 stand rejected under 35 U.S.C. § 103(a) as being unpatentable over
Badesha ‘643 in view of Badesha ‘504.
OPINION
We have reviewed Appellants’ arguments for patentability and the
evidence relied upon by the Examiner in asserting the obviousness of the
claimed subject matter. In so doing, we find ourselves in agreement with the
Examiner that the claimed subject matter would have been obvious to one of
ordinary skill in the art within the meaning of 35 U.S.C. § 103 (a) in view of
the applied prior art. Accordingly, we will sustain the Examiner’s
rejections. Our reasoning follows.
Appellants state that “Claims 1-21 stand or fall together.” (Br. 4).
Accordingly, we select claim 20 as the representative claim on which we
shall decide this appeal. 37 CFR § 1.192(c)(7) (1997) and In re Wood,
582 F.2d 638, 642, 199 USPQ 137, 140 (CCPA 1978).
Badesha ‘643 discloses a device (fuser) including: (a) a core (11) that
can be made of various metals; (b) an intermediate layer (22) that can be
formed from a high temperature resistant elastomer, such as a silicone
elastomer; and (c) an outer layer (12) made from an elastomer including a
silicone elastomer and a mica-type layered silicate. The silicone elastomer
and the mica-type layered silicate form a delaminated nanocomposite
(Badesha ‘643, col. 5, l. 65 though col. 6, l. 42 and Figs. 3-5). A heating
member is associated with the core of the device, which device may be in
the form of a roll, plate or belt (Badesha ‘643, col. 6, l. 5-17).
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Appeal 2006-1593
Application 09/737,413

Concerning the correspondence of the aforementioned disclosure of
the device of Badesha ‘643 and the transfix member device required by
Appellants’ representative claim 20, we note that the substrate called for in
claim 20 can be formed from a metal or alloys and the intermediate layer
from a silicone elastomer (Specification 20). Moreover, claim 20 is open to
the shape of the transfix member and Appellants provide that a variety of
transfix device forms are suitable, including, inter alia, strip, drum, cylinder,
and belt constructions (Specification 22). While Badesha ‘643 calls the
multi-layered device disclosed therein a fuser based on the use of the device
in a printing machine by Badesha ‘643, the structure of the fuser device of
Badesha ‘643 corresponds with the structure recited in representative claim
20.
Whether a rejection is made under 35 U.S.C. § 103 as here, or under
§ 102, it is well settled that when Appellants’ product and that of the prior
art appear to be identical or substantially identical the burden shifts to
Appellants to provide evidence that the prior art product does not necessarily
or inherently possess the relied upon characteristics of Appellants’ claimed
product. See In re Fitzgerald, 619 F.2d 67, 70, 205 USPQ 594, 596 (CCPA
1980); In re Best, 562 F.2d 1252, 1255, 195 USPQ 430, 433-34 (CCPA
1977); In re Fessmann, 489 F.2d 742, 745, 180 USPQ 324, 326 (CCPA
1974). The reason is that the Patent and Trademark Office is not able to
manufacture and compare products. See Best, 562 F.2d at 1255, 195 USPQ
at 434.
In light of the above discussion, Appellants’ arguments concerning a
lack of suggestion and/or a lack of a reasonable expectation of success in
combining either of Badesha ‘504 or Swift with Badesha ‘643 are unavailing
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Appeal 2006-1593
Application 09/737,413

in that Badesha ‘643 alone furnishes sufficient evidence to render the
representative claim 20 subject matter prima facie unpatentable. After all, a
disclosure that anticipates under 35 U.S.C. § 102 also renders the claim
unpatentable under 35 U.S.C. § 103, for "anticipation is the epitome of
obviousness." Jones v. Hardy, 727 F.2d 1524, 1529, 220 USPQ 1021, 1025
(Fed. Cir. 1984). See also In re Fracalossi, 681 F.2d 792, 794, 215 USPQ
569, 571 (CCPA 1982); In re Pearson, 494 F.2d 1399, 1402, 181 USPQ
641, 644 (CCPA 1974).
The thrust of Appellants’ arguments, as they apply to the
representative claim 20, appears to be based on the notion that the
appellation “transfix member” as employed in the preamble of representative
claim 20 necessarily requires a distinct structure from that disclosed by
Badesha ‘643.1 In this regard, Appellants seemingly maintain that a transfix
member must be capable of performing transferring and fixing functions
whereas Badesha ‘643 does not explicitly disclose that the denoted fuser
device disclosed therein is capable of performing a transferring function in
addition to the fixing (fusing) functions performed by a fuser. However,
even if we could agree with Appellants that the name “transfix member”
necessarily implies another functionality for the claimed device in addition
to a fixing (fusing) function, Appellants have not fairly established that the
substantially identical structure of the fuser of Badesha ‘643 would not be
capable of performing the additional transfer functions of a transfix device.

1 As we noted above, Appellants have brought this appeal on the basis of all
of the appealed claims standing or falling together. Thus, we will not
belabor the record with a discussion of the additional teachings of Swift or
Badesha ‘504 as applied by the Examiner in combination with Badesha ‘643
to establish the obviousness of the other appealed claims.
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Appeal 2006-1593
Application 09/737,413

In this regard, Appellants refer to a portion of pages 2 and 3 of their
Specification in arguing that a transfix element “has different electrical,
mechanical, and chemical requirements for the layers thereof” than those of
a fuser (Br. 7-8, Reply Brs. 3). However, our review of the referred to pages
of the Specification reveals no implicitly required product distinction for the
claimed transfix member over the applied fuser of Badesha based on the
general discussion about electrostatic printing machine transfer and transfix
members set forth therein. Concerning the outer layer requirements of
representative claim 20, we note that Badesha ‘643 discloses that the fuser
members referred to therein employ an outer layer with good thermal
properties that appears to be substantially identical to the outer layer
required by the representative claim. Compare the mica-type layered silicate
described for use in the silicone elastomer-containing outer layer of the fuser
of Badesha ‘643 with the requirements of representative claim 20. See, e.g.,
col. 6, l. 43 through col. 2, l. 52 of Badesha ‘643.
As our reviewing court stated in In re Schreiber, 128 F.3d 1473, 1478,
44 USPQ2d 1429, 1432 (Fed. Cir. 1997):
A patent applicant is free to recite features of an
apparatus either structurally or functionally. See In re
Swinehart, 439 F.2d 210, 212, 169 USPQ 226, 228 (CCPA
1971)(“[T]here is nothing intrinsically wrong with [defining
something by what it does rather than what it is] in drafting
patent claims.”). Yet, choosing to define an element
functionally, i.e., by what it does, carries with it a risk. As our
predecessor court stated in Swinehart, 439 F.2d at 213, 169
USPQ at 228:
where the Patent Office has reason to believe that a
functional limitation asserted to be critical for
establishing novelty in the claimed subject matter
may, in fact, be an inherent characteristic of the prior
art, it possesses the authority to require the applicant
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Appeal 2006-1593
Application 09/737,413

to prove that the subject matter shown to be in the
prior art does not possess the characteristic relied on.

Here, we determine that the correspondence between the fuser
structure of Badesha ‘643 and the structure required by representative
appealed claim 20 furnishes sufficient reason to believe that the fuser of
Badesha ‘643 possesses the functional limitation(s) that, from Appellants’
perspective, would be required by the claimed appellation “transfix
member.” This is so since the structures of the claimed device and the
applied fuser of Badesha ‘643, including the outer layer thereof, appear to be
identical or substantially identical. Therefore, even if we could agree with
Appellants that representative claim 20 requires a transfer functionality as
argued, the burden would then shift to Appellants to show that the fuser of
Badesha ‘643 does not possess the argued intrinsic functionally allegedly
required of the claimed transfix member. Appellants, however, failed to
carry this burden.
CONCLUSION
The decision of the Examiner to reject claims 1-10 and 13-21under
35 U.S.C. § 103(a) as being unpatentable over Badesha ‘643 in view of
Swift and to reject claims 1-17, 20 and 21 under
35 U.S.C. § 103(a) as being unpatentable over Badesha ‘643 in view of
Badesha ‘504 is affirmed.
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Appeal 2006-1593
Application 09/737,413

No time period for taking any subsequent action in connection with
this appeal may be extended under 37 CFR § 1.136(a)(1)(iv)(2004).

AFFIRMED

tf

John E. Beck
Xerox Corporation
Xerox Square 20A
Rochester, NY 14644
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