Ex Parte Bush

Board of Patent Appeals and Interferences

Jun 23, 2011

10759970 (B.P.A.I. Jun. 23, 2011)

UNITED STATES PATENT AND TRADEMARKOFFICE
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.
10/759,970 01/16/2004 Steven D. Bush 1776-0013 8323
76360 7590 06/23/2011
MAGINOT, MOORE & BECK LLP
111 MONUMENT CIRCLE
SUITE 3250
INDIANAPOLIS, IN 46204
EXAMINER
TUROCY, DAVID P
ART UNIT PAPER NUMBER
1717
MAIL DATE DELIVERY MODE
06/23/2011 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 STEVEN D. BUSH
________________

Appeal 2009-015299
Application 10/759,970
Technology Center 1700
________________

Before ADRIENE LEPIANE HANLON, BEVERLY A. FRANKLIN, and
KAREN M. HASTINGS, Administrative Patent Judges.

HASTINGS, Administrative Patent Judge.

DECISION ON APPEAL

Appeal 2009-015299
Application 10/759,970

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Appellant seeks our review under 35 U.S.C. § 134(a) of the
Examiner’s final decision rejecting claims 21-36. We have jurisdiction over
the appeal under 35 U.S.C. § 6(b).
We AFFIRM.
A. STATEMENT OF THE CASE
Appellant’s claimed subject matter relates to a dip-coating method for
controlling the uniform thickness of coating formed from immersion, or dip-
coating, of photoreceptors (Spec. 1:4-8). Claim 21 is illustrative:
21. A method of manufacturing a photoreceptor comprising:

pumping a charge transfer layer (“CTL”) solution into a
tube via a CTL solution inlet in the tube, the CTL
solution having an initial viscosity, the tube having an
upper opening positioned above the CTL solution inlet in
the tube and sized to receive a substrate therethrough, the
upper opening being configured to act as a solution outlet
for the tube, the CTL solution being pumped through the
tube from the CTL solution inlet to the CTL solution
outlet at an initial pump speed selected to generate a
predetermined vertical flow rate of the CTL solution in
the tube;

inserting the substrate through the upper opening and at
least partially submerging the substrate in the CTL
solution in the tube;

withdrawing the substrate from the tube at a
predetermined pull rate as the CTL solution is pumped
through the tube at the predetermined vertical flow rate,

the predetermined pull rate and the predetermined
vertical flow rate being selected in accordance with the
initial viscosity of the CTL solution to provide a
differential rate that enables a CTL coating to be
deposited on the substrate at a target thickness;
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measuring a viscosity of the CTL solution as the
substrate is being withdrawn from the tube; and

adjusting the initial pump speed to generate an adjusted
vertical flow rate of the CTL solution in the tube in
response to deviations of the measured viscosity from the
initial viscosity as the substrate is being withdrawn from
the tube, the adjusted vertical flow rate being selected in
accordance with a magnitude of the deviations and the
predetermined pull rate to provide an adjusted differential
rate to maintain the target thickness of the CTL coating
on the substrate as the substrate is withdrawn from the
tube.
The Examiner relies upon the following prior art references in the
rejections of the appealed claims:
Langlois 5,149,612 Sept. 22, 1992
Mistrater 5,681,391 Oct. 28, 1997
Cai 6,270,850 B1 Aug. 7, 2001
Pinsly 6,180,310 B1 Jan. 30, 2001
The Examiner rejected, and Appellant appeals, the following
rejections under 35 U.S.C. § 103(a):
claims 21 and 24-30 as unpatentable over Mistrater in view of Pinsly
and Cai; and
claims 22-23 and 31-36 as unpatentable over the combined prior art of
Mistrater, Pinsly, Cai, and Langlois.
Appellant does not separately argue with any reasonable specificity
any of the individual dependent claims, including those separately rejected
(App. Br. 11-15, Reply Br. 2-5). Appellant mainly focuses the arguments on
claim 21. Accordingly, we likewise focus on independent claim 21 to
decide the issues on appeal.
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B. MAIN ISSUE ON APPEAL
Did the Examiner reversibly err in determining that the method of
manufacturing a photoreceptor as recited in claim 21 was obvious under 35
U.S.C. § 103(a) over the combined prior art of Mistrater, Pinsly, and Cai,
because, as Appellant alleges, Pinsly does not does not teach that variations
in coating thickness are directly related to variations in viscosity (App. Br.
11) and that “nothing in either [Cai or Pinsly] . . . teaches or suggests the
monitoring of one coating characteristic and adjusting another coating
characteristic to compensate for a change in the first coating characteristic”
(App. Br. 14)?
We answer this question in the negative.
C. PRINCIPLES OF LAW
In assessing whether a claim to a combination of prior art elements or
steps would have been obvious, the question to be asked is whether the
improvement of the claim is more than the predictable use of prior art
elements or steps according to their established functions. KSR Int’l Co. v.
Teleflex Inc., 550 U.S. 398, 417 (2007). The analysis need not seek out
precise teachings directed to the specific subject matter of the claim, for it is
proper to take account of the inferences and creative steps that a person of
ordinary skill in the art would employ. Id. at 418.
“For obviousness under § 103, all that is required is a reasonable
expectation of success.” In re O’Farrell, 853 F.2d 894, 903-04 (Fed. Cir.
1988).
Arguments and conclusions unsupported by factual evidence carry no
evidentiary weight. In re De Blauwe, 736 F.2d 699, 705 (Fed. Cir. 1984); In
re Lindner, 457 F.2d 506, 508 (CCPA 1972). Without supporting evidence,
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Application 10/759,970

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arguments and conclusory statements by the inventor cannot establish
patentability. In re De Blauwe, supra; In re Swan Wood, 582 F.2d 638, 642
(CCPA 1978).
D. ANALYSIS
We have thoroughly reviewed each of Appellant’s arguments for
patentability. However, we are 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 § 103 in view of the applied prior art.
Specifically, we agree with the Examiner that it would have been
obvious to one of ordinary skill in the art to have modified Mistrater and
altered the relative coating speed, i.e., adjusted the pumping speed, due to
the sensed viscosity because Pinsly exemplifies that viscosity changes
throughout the coating process result in variations in coating thickness, and
Cai discloses that the coating speed and viscosity are directly related to the
coating thickness. (See e.g., Ans. 3-6). We add the following primarily for
emphasis.
Appellant’s argument that Pinsly does not teach that variations in
coating thickness are directly related to variations in viscosity (e.g., App. Br.
11) is unconvincing for the reasons explained by the Examiner (Ans. 11).
Notably, contrary to Appellant’s assertion, the Examiner’s finding of fact is
directly supported by Pinsly:
Variations in charge transport layer coating solution
viscosity while coating, sudden and small charge transport layer
coating solution flow rate changes, among other mechanisms,
cause variations in coating material thickness.
(Pinsly, col. 2, ll. 5-11)
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Appellant argues that Pinsly does not teach that viscosity can be
manipulated to control a coating thickness uniformly (App. Br. 12). We
disagree and concur with the detailed findings of the Examiner (see e.g.,
Ans. 12-13). Notably, the improved coating process disclosed in Pinsly was
intended to “provide[] improved . . . coating thickness uniformity” (Pinsly
col. 3, lines 14-15) and “minimize[] large fluctuations in viscosity and the
variation of thickness of the deposited coating . . . .” (Ans. 13; see also,
Pinsly col. 7, lines 54-63). Indeed, one of ordinary skill in the art would
have fully appreciated that viscosity changes affect coating thickness from
both Mistrater and Cai, as well as from many everyday experiences (e.g.,
painting, dipping food in sauces).1
Appellant’s argument that Pinsly teaches away from any useful
purpose for varying the flow rate of the coating solution (App. Br. 12) is
unavailing for reasons aptly explained by the Examiner (see Ans. 15). It is
well established that when determining if a reference teaches away from an
invention, all of the teachings of the reference must be considered in totality.
W.L. Gore & Assoc., Inc. v. Garlock, Inc., 721 F.2d 1540, 1550–51, (Fed.
Cir. 1983), cert. denied, 469 U.S. 851, (1984); see also In re Gurley, 27
F.3d 551, 553 (Fed. Cir. 1994) (providing that teaching away is a significant
factor, but the nature of the teaching is highly relevant, and must be weighed
in substance).

1 See, e.g., Leapfrog Enter., Inc. v. Fisher-Price, Inc., 485 F.3d 1157, 1161
(Fed. Cir. 2007) (“[a]n obviousness determination is not the result of a rigid
formula disassociated from the consideration of the facts of a case. Indeed,
the common sense of those skilled in the art demonstrates why some
combinations would have been obvious where others would not.”)
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Appellant argues that “nothing in either [Cai or Pinsly] . . . teaches or
suggests the monitoring of one coating characteristic and adjusting another
coating characteristic to compensate for a change in the first coating
characteristic” (App. Br. 14). Appellant also argues that “[n]o
corresponding change in viscosity is disclosed [in Cai] . . .so Cai is not
teaching that coating solution speed changes are related to viscosity changes
or vice versa” (id. at lines 1-3). These arguments are not persuasive of any
error in the Examiner’s rejection. Cai discloses a mathematical equation,
which Appellant concedes is a well known formula in the art (id. at 13). The
equation in Cai directly relates coating speed, coat thickness, solution
viscosity, and density (Cai, col. 4, lines 29-43). As the Examiner states:
Cai explicitly discloses that the coating thickness is directly
related to the product of viscosity and the coating speed. One
of ordinary skill in the art would understand that if the viscosity
changes during the coating thickness the product of the
viscosity and the coating speed can be maintained constant by
(1) adjusting the viscosity and/or (2) adjusting the coating speed
and therefore adjusting the coating speed in response to the
change in viscosity (as taught by Pinsly) would have been
obvious to one of ordinary skill in the art to provide predictable
results of obtaining a uniform coating thickness.
(Ans. 16)
Appellant has not convinced us of any error in the Examiner’s
reasonable conclusion that adjusting the pumping speed in response to the
viscosity to maintain a constant coating thickness would have led to
predictable results because a predictable use of prior art elements according
to their established functions is prima facie obvious (id. at lines 15-19; see
also Ans. 16).
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Appellant’s additional arguments in the briefs are unavailing because
they improperly focus on the teachings of references individually instead of
addressing the Examiner’s stated case for obviousness (generally App. Br.;
Reply Br.). “[O]ne cannot show non-obviousness by attacking references
individually where . . . the rejections are based on combinations of
references.” In re Keller, 642 F.2d 413, 426 (CCPA 1981).
In sum, Appellant has not persuaded us that the Examiner erred in
concluding that it would have been prima facie obvious for one of ordinary
skill in the art, using no more than ordinary creativity, to have modified the
dip-coating procedure disclosed by Mistrater by measuring the viscosity of
the solution, as exemplified to be known by Pinsly, and adjusting the
pumping speed accordingly because Cai discloses that both of these
variables effect the coating thickness uniformity. Modification of one
variable (pumping speed) in response to a variation in the other (viscosity) to
achieve a target coat thickness is well within the scope of one of ordinary
skill in the art.
Accordingly, Appellant has not shown reversible error in the
Examiner’s determination that the subject matter of independent claim 21
(nor any of the not separately argued claims) would have been prima facie
obvious over the combined teachings of the applied prior art references.
E. DECISION
For the reasons stated above and in the Answer, we sustain the § 103
rejections of all of the appealed claims2.

2 Only those arguments actually made by Appellant have been considered in
this decision. Arguments which could have been made but that Appellant
chose not to make have not been considered and are deemed to be waived.
See 37 C.F.R. § 41.37(c)(1)(vii) (2008).
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Application 10/759,970

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The decision of the Examiner is affirmed.

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

AFFIRMED

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