Ex Parte Chen et al

Board of Patent Appeals and Interferences

Jun 17, 2004

09211410 (B.P.A.I. Jun. 17, 2004)

Page 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not binding precedent of the Board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. 22
UNITED STATES PATENT AND TRADEMARK OFFICE
_______________
BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
_______________
Ex parte JIANN H. CHEN,
STEPHEN V. DAVIS, ROBERT A. LANCASTER
and ALLEN KASS
______________
Appeal No. 2004-1287
Application 09/211,410
_______________
ON BRIEF
_______________
Before OWENS, KRATZ, and DELMENDO, Administrative Patent Judges.
KRATZ, Administrative Patent Judge.

DECISION ON APPEAL
This is a decision on appeal from the examiner's final
rejection of claims 3, 6-14 and 16-21, which are all of the claims
pending in this application.
Appeal No. 2004-1287
Application 09/211,410
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1 Fusing members are employed for affixing toner material to a receiving
sheet in a photocopying device.
BACKGROUND
Appellants' invention relates to a fuser member1 including a
metallic core and a layer of composite material including an
aluminum powder and a cross-linked poly(dialkylsiloxane) formed over
the core. An understanding of the invention can be derived from a
reading of exemplary claim 6, which is reproduced below.
6. A fuser member having a support metallic core and a layer
of material formed over the metallic core, the layer including
composite material, comprising:
(a) an aluminum powder having an average particle size less
than 25 microns and being present in an amount less than 30 weight
percent;
(b) a cross-linked poly(dialkylsiloxane) incorporating an
oxide, wherein the poly(dialkylsiloxane) has a weight average
molecular weight before crosslinking of about 5,000 to 80,000; and
(c) a silane crosslinking agent.
The prior art references of record relied upon by the examiner
in rejecting the appealed claims are:
Fitzgerald 5,292,606 Mar. 08, 1994
Visser et al. (Visser) 5,654,052 Aug. 05, 1997
Law et al. (Law) 5,837,340 Nov. 17, 1998
Claims 3, 6-10, 14 and 16-21 stand rejected under 35 U.S.C.
Appeal No. 2004-1287
Application 09/211,410
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§ 103(a) as being unpatentable over Visser in view of Law. Claims
11-13 stand rejected under 35 U.S.C. § 103(a) as being unpatentable
over Visser in view of Law and Fitzgerald.
We refer to the brief and to the answer for a complete
exposition of the opposing viewpoints expressed by appellants and
the examiner concerning the issues before us on this appeal.
OPINION
Having carefully considered each of appellants
arguments set
forth in the brief, appellants have not persuaded us of reversible
error on the part of the examiner. Accordingly, we will affirm the
examiner’s rejections for substantially the reasons set forth by the
examiner in the answer. We add the following for emphasis.
Appellants state that the appealed claims stand or fall
together (brief, page 13). Consequently, we select claim 6 as the
representative claim on which we decide this appeal as to the
examiner’s first stated ground of rejection.
Appellants do not dispute the examiner’s determination that
Visser discloses a fuser member including: (1) a core that can be
made of metal materials; and (2) a composite material coating
including, inter alia, a cross linked poly(dimethylsiloxane) of a
molecular weight overlapping the molecular weight range specified in
Appeal No. 2004-1287
Application 09/211,410
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representative claim 6, a silane crosslinking agent, and a metal
oxide filler. See, e.g., column 2, line 37 through column 4, line
17 and column 5, lines 26-36 of Visser.
Law discloses a fuser member wherein the fuser core is
surrounded by an outer layer that can include a silicone polymer
material and a thermally conductive filler including, inter alia,
metal particles including aluminum, and metal oxides. See, e.g.,
column 4, line 54 through column 5, line 12 and column 7, lines
7-29.
According to the examiner, it would have been obvious to one
of ordinary skill in the art at the time of the invention to employ
the conductive aluminum powder of Law in the composite material of
Visser to enhance the conductive properties of the composite
material layer by the added aluminum powder as suggested by Law.
Moreover, the examiner has reasonably determined that the selection
of an aluminum powder size of 25 microns or less on average and an
amount thereof less than about 30 weight percent for use in the
fuser core coating layer of Visser would have been within the
ordinary skill of the art upon routine experimentation to determine
the workable amounts and sizes of such aluminum powder. See In re
Peterson, 315 F.3d 1325, 1330, 65 USPQ2d 1379, 1382 (Fed. Cir.
2003)(“The normal desire of scientists or artisans to improve upon
Appeal No. 2004-1287
Application 09/211,410
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what is generally known provides the motivation to determine where
in a disclosed set of percentage ranges is the optimum combination
of percentages.”); In re Boesch, 617 F.2d 272, 276, 205 USPQ 215,
219 (CCPA 1980)(“[D]iscovery of an optimum value of a result
effective variable in a known process is ordinarily within the skill
of the art.”); In re Aller, 220 F.2d 454, 456, 105 USPQ 233, 235
(CCPA 1955)(“[W]here the general conditions of a claim are disclosed
in the prior art, it is not inventive to discover the optimum or
workable ranges by routine experimentation.”).
We agree with the examiner’s obviousness position.
Appellants’ principal arguments are directed to a proposed
modification that the examiner did not present in the stated
rejection; that is, a modification of the fuser roller substrate
of Law. We decline to address such a misdirected argument. We
recognize that the fuser roller of Law is disclosed as being made
of a plastic material as opposed to the here claimed metallic fuser
core (roller). Nonetheless, appellants have not fairly explained
how the material construction of the roller of Law would vitiate
against the teachings of Law with respect to employing an aluminum
powder filler as an alternative or in addition to a metal oxide
filler in an outer composite layer to control and enhance the
conductivity of that layer in a fuser device having a metallic core
Appeal No. 2004-1287
Application 09/211,410
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such as disclosed in Visser, as discussed above. In this regard,
appellants have not articulated a persuasive argument explaining why
the use of an aluminum filler to enhance conductivity of the
metallic core composite coating of Visser would not have been fairly
suggested by the combined teachings of Visser and Law as reasonably
explained by the examiner. We note that Visser (column 1, lines
25-34) teaches that heat can be applied from the interior of the
roller to the receiver sheet which makes evident that the fuser
roller layers of Visser must conduct some heat just as the fuser
roller layers of Law (column 2, lines 41-62) must be capable of
conducting heat.
To the extent that appellants are asserting that the examples
furnished in the specification establish unexpected results for the
claimed subject matter by the presentation thereof in the brief
(pages 9-12), we note that the question as to whether unexpected
advantages have been demonstrated is a factual question. In re
Johnson, 747 F.2d 1456, 1460, 223 USPQ 1260, 1263 (Fed. Cir. 1984).
Thus, it is incumbent upon appellants to supply the factual basis
to rebut the prima facie case of obviousness established by the
examiner. See, e.g., In re Klosak, 455 F.2d 1077, 1080, 173 USPQ
14, 16 (CCPA 1972). Appellants, however, do not provide an adequate
explanation regarding any factual showing in the specification, that
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Application 09/211,410
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is referred to in the brief, to support a conclusion of unexpected
advantages.
In particular, appellants have not established that the test
results presented represent unexpected results since metal powder
would be expected to be more conductive than metal oxides and metal
oxides would be expected to wear somewhat better than the metal,
which appears to be consistent with the reported results. Moreover,
the furnished test results are not reasonably commensurate in scope
with the here claimed invention. We note that representative claim
6 is not limited to the specific cross-linked polymer, the specific
amounts and sizes of aluminum powder, and the specific molding
method employed in making the test sample as outlined in the
referenced Examples 1 and 2 of the specification as evident by a
comparison of representative claim 6 with those Examples of
appellants’ specification. We note for example that appellants’
specification at page 7 illustrates that 55-85 weight percent oxide
fillers are used which corresponds with Visser (column 4, lines
9-11) whereas any amount of aluminum powder in an amount less than
30 weight percent (which essentially includes 0 weight percent) are
employed in appellants’ preferred embodiment. Thus, it is apparent
that appellants’ evidence is considerably more narrow in scope than
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Application 09/211,410
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the representative appealed claim 6. See In re Dill, 604 F.2d 1356,
1361, 202 USPQ 805, 808 (CCPA 1979).
Moreover, appellants simply have not shown that the examples
prepared for comparison represent the closest prior art given the
disclosure of Visser as to the amount of metal oxide heat transfer
particles to be included, as discussed above. Hence, we are not
satisfied that the evidence of record that is offered demonstrates
results that are truly unexpected and commensurate in scope with the
claims. Nor have appellants satisfied their burden of explaining
how the results reported for those limited examples presented can
be extrapolated therefrom so as to be reasonably guaranteed as
attainable through practicing the invention as broadly claimed.
Having reconsidered all of the evidence of record proffered by
the examiner and appellants, we have determined that the evidence of
obviousness, on balance, outweighs the evidence of nonobviousness.
Hence, we conclude that the claimed subject matter as a whole would
have been obvious to one of ordinary skill in the art. Accordingly,
we affirm the examiner’s § 103(a) rejection of claims 3, 6-10, 14
and 16-21.
Concerning the examiner’s § 103(a) rejection of claims 11-13
further employing the teachings of Fitzgerald, we note that
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Application 09/211,410
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appellants have specified that all of the appealed claims stand or
fall together and do not argue the additional features set forth in
any of dependent claims 11, 12 or 13 as patentably distinguishing
over the applied references. Consequently, we shall also affirm the
§ 103(a) rejection of claims 11-13 on this record.
CONCLUSION
The decision of the examiner to reject claims 3, 6-10, 14 and
16-21 under 35 U.S.C. § 103(a) as being unpatentable over Visser in
view of Law and to reject claims 11-13 under 35 U.S.C. § 103(a) as
being unpatentable over Visser in view of Law and Fitzgerald is
affirmed.
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Application 09/211,410
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No time period for taking any subsequent action in connection
with this appeal may be extended under 37 CFR § 1.136(a).
AFFIRMED
Terry J. Owens )
Administrative Patent Judge )
)
)
)
) BOARD OF PATENT
Peter F. Kratz ) APPEALS
Administrative Patent Judge ) AND
) INTERFERENCES
)
)
)
Romulo H. Delmendo )
Administrative Patent Judge )
Appeal No. 2004-1287
Application 09/211,410
Page 11
Lawrence P. Kessler
Nexpress Solutions, LLC
1447 St. Paul Street
Rochester, NY 14653-7002
PFK/cam