Ex parte Battat et al.

Board of Patent Appeals and Interferences

Sep 11, 2000

08873958 (B.P.A.I. Sep. 11, 2000)

1
THIS OPINION WAS NOT WRITTEN FOR PUBLICATION
The opinion in support of the decision being entered today was not written for
publication in a law journal and is not binding precedent of the Board.
Paper No. 11
UNITED STATES PATENT AND TRADEMARK OFFICE
____________
BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
____________
Ex parte DAVID BATTAT, SANTOKH S. BADESHA, CLIFFORD O. EDDY,
LOUIS D. FRATANGELO, ARMOLD W. HENRY and ALAN R. KUNTZ
____________
Appeal No. 2000-0291
Application No. 08/873,958
____________
ON BRIEF
____________
Before ABRAMS, STAAB, and CRAWFORD, Administrative Patent
Judges.
CRAWFORD, Administrative Patent Judge.
DECISION ON APPEAL
This is a decision on appeal from the examiner's final
rejection of claims 1 through 9, which are all of the claims
pending in this application.
The appellants’ invention relates to a method for reusing
a fuser member comprised of an outer layer having an original
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fusing surface that is deficient. An understanding of the
invention can be derived from a reading of exemplary claim 1,
which appears in the appendix to the appellants’ brief.
The prior art
The prior art references of record relied upon by the
examiner in rejecting the appealed claims are:
Moxon 3,604,239 Sept. 14, 1971
The prior art admitted by the appellants to be old
appearing on pages 1 to 2 of the specification.
The rejections
Claims 1 through 9 stand rejected under 35 U.S.C. § 103
as being unpatentable over Applicant’s Admitted Prior Art
(“AAPA”) in view of Moxon.
Rather than reiterate the conflicting viewpoints advanced
by the examiner and the appellants regarding the above-noted
rejections, we make reference to the examiner's answer
(Paper No. 10, June 7, 1999) for the examiner's complete
reasoning in support of the rejection, and to the appellants’
brief (Paper No. 9, filed May 24, 1999) for the appellants’
arguments thereagainst.
OPINION
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In reaching our decision in this appeal, we have given
careful consideration to the appellants’ specification and
claims, to the applied prior art references, and to the
respective positions articulated by the appellants and the
examiner. As a consequence of our review, we make the
determinations which follow.
The rejection in this case is made pursuant 35 U.S.C. §
103. We initially note that in rejecting claims under 35
U.S.C. § 103, the examiner bears the initial burden of
presenting a prima facie case of obviousness. See In re
Rijckaert, 9 F.3d 1531, 1532, 28 USPQ2d 1955, 1956 (Fed. Cir.
1993). A prima facie case of obviousness is established by
presenting evidence that the reference teachings would appear
to be sufficient for one of ordinary skill in the relevant art
having the references before him to make the proposed
combination or other modification. See In re Lintner, 458
F.2d 1013, 1016, 173 USPQ 560, 562 (CCPA 1972). Furthermore,
the conclusion that the claimed subject matter is prima facie
obvious must be supported by evidence, as shown by some
objective teaching in the prior art or by knowledge generally
available to one of ordinary skill in the art that would have
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led that individual to combine the relevant teachings of the
references to arrive at the claimed invention. See In re
Fine, 837 F.2d 1071, 1074, 5 USPQ2d 1596, 1598 (Fed. Cir.
1988). Rejections based on § 103 must rest on a factual basis
with these facts being interpreted without hindsight
reconstruction of the
invention from the prior art. The examiner may not, because
of doubt that the invention is patentable, resort to
speculation, unfounded assumption or hindsight reconstruction
to supply
deficiencies in the factual basis for the rejection. See In
re Warner, 379 F.2d 1011, 1017, 154 USPQ 173, 177 (CCPA 1967),
cert. denied, 389 U.S. 1057 (1968). Our reviewing court has
repeatedly cautioned against employing hindsight by using the
appellant's disclosure as a blueprint to reconstruct the
claimed invention from the isolated teachings of the prior
art. See, e.g., Grain Processing Corp. v. American
Maize-Products Co., 840 F.2d 902, 907, 5 USPQ2d 1788, 1792
(Fed. Cir. 1988).
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With this as background, we analyze the prior art applied
by the examiner in the rejection of the claims on appeal. The
examiner, in support of the rejection, states:
AAPA teaches that it is old and well known
in the art to repair fuser members by
removing the outer coatings and then
applying new coatings to obtain a new
fusing surface Moxon teaches that it is old
and well known to repair rollers by
removing the outer surface until the
desired characteristics are reached,
wherein material is removed from the
surface but no additional material is
added. It would have been obvious to one
of ordinary skill in the art at the time
the invention was made to Modify the method
as taught by AAPA by only removing material
to obtain a new working surface since to do
so is old an dwell [sic] known in the art
as taught by Moxon for the purpose of
achieving an easier, simpler, less
complicated, less time consuming
process.[Final Rejection at page 2]
The appellants argue that neither Moxon nor AAPA
discloses that there is no recoating of the outer layer with
outer layer material and that persons skilled in the art would
have no motivation to look to Moxon in regard to spent fuser
members because Moxon is nonanalogous art.
Moxon discloses that particulate matter which accumulates
on a rolling mill utilized to roll metal can be removed by
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flailing the working surface of the roll with flexible
elements (Col. 1, lines 58 to 65). We agree with the
appellants that the Moxon roll is recoated with outer layer
material (See Col. 1, lines 43 to 44). In addition, neither
Moxon nor AAPA discloses or suggests anything about renewing a
spent fuser member which has a outer coating surface which is
deficient due to scratches or gouges. There is no suggestion
that the flailing method will be effective on a spent fuser
member. Indeed, the outer coating of Moxon is particulate
matter which accumulates on the roll and the outer coating of
the fuser member is a surface layer of the fuser member
itself. Therefore, is it our opinion that even if the Moxon
reference is analogous art, there is no suggestion to use
the flailing method disclosed in Moxon on an AAPA spent fuser
member. As such, we will not sustain the rejection of the
examiner.
The decision of the examiner is reversed.
REVERSED
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NEAL E. ABRAMS )
Administrative Patent Judge )
)
)
) BOARD OF PATENT
LAWRENCE J. STAAB )
Administrative Patent Judge ) APPEALS AND
)
) INTERFERENCES
)
MURRIEL E. CRAWFORD )
Administrative Patent Judge )
MEC:pgg
Ronald Zibelli
Xerox Corporation
Xerox Square 20A
Rochester, NY 14644
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