Ex Parte Dontula et al

Board of Patent Appeals and Interferences

Sep 30, 2009

11000124 (B.P.A.I. Sep. 30, 2009)

UNITED STATES PATENT AND TRADEMARK OFFICE
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BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
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Ex parte NARASIMHARAO DONTULA,
TERRY A. HEATH, CHARLES L. BAUER,
MICHAEL R. BRICKEY, JEFFREY R. GILLMOR,
and TEH-MING KUNG
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Appeal 2009-006512
Application 11/000,124
Technology Center 1700
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Decided: September 30, 2009
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Before CATHERINE Q. TIMM, JEFFREY T. SMITH, and
MICHAEL P. COLAIANNI, Administrative Patent Judges.

TIMM, Administrative Patent Judge.

DECISION ON APPEAL
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Application 11/000,124

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Appellants appeal under 35 U.S.C. § 134(a) from the Examiner’s
decision rejecting claims 1, 2, and 10-21.1 We have jurisdiction under
35 U.S.C. § 6(b).
We REVERSE.
I. STATEMENT OF THE CASE
The invention relates to a toner receiving member for an
electrophotographic printing process (e.g., photo paper) with improved gloss
and resistance to environmental damage with good toner adhesion.
(Specification (Spec.) 4, l. 18 to 5, l. 12). Claim 1 is illustrative of the
subject matter on appeal:
1. A toner receiver member comprising a base, at least one tie
layer adjacent to said base, and at least one toner receiver layer adjacent said
at least one tie layer on the side opposite to the base, wherein said at least
one toner receiver layer comprises a mixture of styrene acrylate copolymer
having a glass transition temperature of between 40 and 60° C with an
ethylene methacrylate copolymer or with a low density polyethylene
wherein said toner receiver layer has a melt strength of between 2 cN and
12 cN at 200 °C temperature.
Appellants request review of the sole rejection maintained by the
Examiner, namely, the rejection of claims 1, 2, and 10-21 under 35 U.S.C.
§ 103(a) as obvious over Tani (US 2003/0224192 A1, published
December 4, 2003) in view of Whitmore (US 3,411,907, issued
November 19, 1968) and Kato (US 4,968,572, issued November 6, 1990).
II. DISPOSITIVE ISSUE ON APPEAL
Appellants contend that the Examiner has failed to provide sufficient
motivation to show that one of ordinary skill in the art would have used
ethylene methacrylate, which Kato teaches is used in a photoreceptor, as the

1 Claims 22-35 have been withdrawn from consideration. (App. Br. 1).
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polyolefin of the electrophotographic image-receiving sheet taught by Tani
(Appeal Brief (App. Br.) 3, Reply Brief (Reply Br.) 1-2).
In the rejection, the Examiner states that Tani and Kato are both from
the field of electrophotographic recording sheets and that the motivation to
use the ethylene methacrylate would be “to control smoothness,
photosensitivity and dark charge retention (col. 19, lines 1-24)” (Examiner’s
Answer (Ans.) 4). The Examiner further responds that the electro-
photographic article of Kato can be used for multiple purposes and is
subjected to development image formation which is fundamentally
equivalent to the electrophotographic image-receiving sheet of Tani
(Ans. 6).
The sole issue on appeal arising from the contentions of Appellants
and the Examiner is: have Appellants shown that the Examiner reversibly
erred by providing insufficient reasoning as to why one of ordinary skill in
the art would have used the ethylene methacrylate taught by Kato in the
electrophotographic image-receiving sheet taught by Tani?
III. FACTUAL FINDINGS
The following Findings of Fact (FF) are relevant to deciding the issue
on appeal:
1. Appellants’ Specification identifies the basic steps of an
electrophotographic process, in which charging and exposing a
photoconductor is a distinct step from using a final substrate to receive and
fix an image formed from toner particles (Spec. 10, ll. 10-17).
2. Kato teaches a binder resin, in which photoconductive particles are
dispersed, to form a photoconductive layer of a photoreceptor with improved
electrostatic characteristics, particularly dark charge retention and
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photosensitivity, and improved image reproducibility (Kato, col. 3, ll. 3-7
and 26-62).
3. Tani teaches the use of a thermoplastic resin as part of the toner
image-receiving layer of an electrophotographic image-receiving sheet (e.g.,
photo printing paper). The toner image-receiving layer receives toner from
an image on a developing drum (photoreceptor) or intermediate transfer
member, using electricity, electrostaticity or pressure in a transferring step,
and the image is fixed onto the receiving layer (paper) by heat or pressure in
a fixing step. (Tani ¶¶ 16 and 102.)
IV. PRINCIPLES OF LAW
The Examiner bears the initial burden of presenting a prima facie case
of unpatentability. In re Oetiker, 977 F.2d 1443, 1445 (Fed. Cir. 1992). The
analysis supporting obviousness should be made explicit, KSR Int'l Co. v.
Teleflex, Inc., 550 U.S. 398, 418 (2007), and must rest on a factual basis
with these facts being interpreted without hindsight reconstruction of the
invention from the prior art. In re Warner, 379 F.2d 1011, 1017 (CCPA
1967); see also In re Rouffet, 149 F.3d 1350, 1358 (Fed. Cir. 1998)
(“hindsight” is inferred when the specific understanding or principal within
the knowledge of one of ordinary skill in the art leading to the modification
of the prior art in order to arrive at appellant's claimed invention has not
been explained).
V. ANALYSIS2
Kato is directed to a photoreceptor with improved electrostatic
characteristics (FF 2). Tani is directed to a composition on an image-

2 We limit our discussion to independent claim 1, the sole independent claim
on appeal.
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receiving sheet (e.g., photo printing paper) for receiving toner from a
photoreceptor (FF 3). While an image receiving sheet and a photoreceptor
are both used in an electrophotographic process, the evidence supports
Appellants’ argument that a photoreceptor is a distinct element with
desirable properties distinguishable from those of an image-receiving sheet
(FF 1). Therefore, we cannot agree with the Examiner that the two devices
are “functionally equivalent” (Ans. 6). The Examiner has pointed to the
improvements to a photoreceptor identified by Kato, i.e., dark charge
retention and photosensitivity, and improved image reproducibility (FF 2),
as providing a reason to include Kato’s ethylene methacrylate in a toner-
receiving layer of an image-receiving sheet, as taught by Tani (FF 3).
However, the Examiner has not established that one of ordinary skill in the
art would have a reasonable expectation that ethylene methacrylate would
predictably provide the properties disclosed by Kato in the different
environment of Tani or that those properties are even desired in an image-
receiving sheet. Accordingly, Appellants have shown that the Examiner
reversibly erred by providing insufficient reasoning as to why one of
ordinary skill in the art would have used the ethylene methacrylate taught by
Kato for use in a photoreceptor in the electrophotographic image-receiving
sheet taught by Tani.
VI. CONCLUSION
For the reasons discussed above, we cannot sustain the Examiner’s
rejection of claims 1, 2, and 10-21 under 35 U.S.C. § 103(a) as obvious over
Tani in view of Whitmore and Kato.
VII. DECISION
We reverse the Examiner’s decision.
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REVERSED

psb

PAUL A. LEIPOLD
PATENT LEGAL STAFF
EASTMAN KODAK COMPANY
343 STATE STREET
ROCHESTER, NY 14650-2201