Ex parte CHRISTY et al.

Board of Patent Appeals and Interferences

Apr 30, 1998

08047188 (B.P.A.I. Apr. 30, 1998)

Application for patent filed April 16, 1993.1
-1-
THIS OPINION WAS NOT WRITTEN FOR PUBLICATION
The opinion in support of the decision being entered
today (1) was not written for publication in a law
journal and (2) is not binding precedent of the Board.
Paper No. 21
UNITED STATES PATENT AND TRADEMARK OFFICE
________________
BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
________________
Ex parte ORRIN D. CHRISTY, JOHN E. PICKETT,
MARK A. MATHEIS and LEO SWANSON
________________
Appeal No. 95-4570
Application No. 08/047,1881
________________
ON BRIEF
________________
Before KIMLIN, JOHN D. SMITH and PAK, Administrative Patent
Judges.
KIMLIN, Administrative Patent Judge.
DECISION ON APPEAL
This is an appeal from the final rejection of claims 1-22,
all the claims remaining in the present application. Claim 1 is
illustrative:
1. A method of applying a designated, non-primary color
print to a substrate, comprising the steps of:
Appeal No. 95-4570
Application No. 08/047,188
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(a) making at least first and second differently colored
toner powders having substantially uniform physical
characteristics;
(b) introducing the first and second toner powders in
desired proportions into a fluidized bed;
(c) uniformly mixing the first and second toner powders
together in the fluidized bed;
(d) applying a substantially uniform electrostatic charge to
the toner powders in the fluidized bed; and
(e) applying the electrostatically charged mixture of toner
powders to a substrate to form uniform non-primary color symbols
on the substrate.
The examiner relies upon the following references as
evidence of obviousness:
Fotland et al. (Fotland) 4,777,106 Oct. 11, 1988
Christy et al. (Christy) 5,532,100 July 2, 1996
(filed Jan. 9, 1991)
Appellants' claimed invention is directed to a method of
applying a non-primary color print to a substrate utilizing
electrostatic imaging technology. The method entails introducing
first and second differently colored toner powders having
substantially uniform physical characteristics into a fluidized
bed, uniformly mixing the toner powders and applying a
substantially uniform electrostatic charge to the mixed powders,
and applying the electrostatically charged mixture to a
substrate. According to appellants, whereas it has been
difficult in the past to apply a uniform charge to a mixture of
Appeal No. 95-4570
Application No. 08/047,188
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toner powders of different color, the present invention is able
to apply a uniform charge to the differently colored powders by
selecting differently colored powders having substantially the
same physical characteristics, such as resistivity, particle size
and flowability.
Claims 1-22 stand provisionally rejected under the
judicially created doctrine of obviousness-type double patenting
over claims 1-28 of U.S. Application No. 07/639,360, now U.S.
Patent No. 5,532,100. Claims 1-22 also stand provisionally
rejected under 35 U.S.C. § 102(e) as being anticipated by U.S.
Patent 5,532,100. In addition, appealed claims 1-22 stand
rejected under 35 U.S.C. § 103 as being unpatentable over
Fotland.
Upon careful consideration of the opposing arguments
presented on appeal, we agree with appellants that the examiner's
rejections are not sustainable.
We consider first the rejections under obviousness-type
double patenting and 35 U.S.C. § 102(e) over claims 1-28 of U.S.
Patent No. 5,532,100. The present claims on appeal recite the
positive steps of uniformly mixing first and second differently
colored toner powders and applying a substantially uniform
electrostatic charge thereto. Neither the claims nor the
disclosure of U.S. Patent No. 5,532,100 describes or suggests
Appeal No. 95-4570
Application No. 08/047,188
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these claimed steps. Manifestly, there is no factual support for
the examiner's conclusion that the appealed claims are described
by the patent within the meaning of 35 U.S.C. § 102, or rendered
obvious for purposes of obviousness-type double patenting by
claims 1-28 of the patent. While the examiner states that "[t]he
issue of toner color is not patentably distinct" (page 7 of
Answer), the issue properly argued by appellants is that U.S.
Patent No. 5,532,100 fails to describe or suggest the claimed
steps of uniformly mixing and charging first and second
differently colored toner powders.
Likewise, Fotland provides no teaching or suggestion of the
claimed steps of uniformly mixing and charging first and second
differently colored toner powders. Fotland's only mention of
colored toners is in the cautionary statement that "conductive
toners can limit printing quality when colored toners are
utilized" (column 1, lines 32 and 33). While the examiner
reasons that "toners having uniform physical characteristics
would be expected to perform similarly in a charged fluidized bed
and the associated method of applying toner" (sentence bridging
pages 5 and 6 of Answer), the reference provides no teaching or
suggestion of uniformly mixing and charging toners of different
color having uniform physical characteristics. At best, the
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Application No. 08/047,188
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examiner invokes impermissible hindsight as a basis for the
rejection.
In conclusion, based on the foregoing, we are constrained to
reverse the examiner's rejections.
REVERSED
EDWARD C. KIMLIN )
Administrative Patent Judge )
)
)
)
JOHN D. SMITH ) BOARD OF PATENT
Administrative Patent Judge ) APPEALS AND
) INTERFERENCES
)
)
CHUNG K. PAK )
Administrative Patent Judge )
Appeal No. 95-4570
Application No. 08/047,188
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