Ex Parte Fromm

Patent Trial and Appeal Board

Jul 28, 2015

12493780 (P.T.A.B. Jul. 28, 2015)

UNITED STATES PATENT AND TRADEMARK OFFICE
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.
12/493,780 06/29/2009 Paul M. Fromm 056-0123 9986
70537 7590 07/28/2015
Prass LLP
2661 Riva Road
Building 1000, Suite 1044
Annapolis, MD 21401
EXAMINER
SCHIFFMAN, BENJAMIN A
ART UNIT PAPER NUMBER
1742
MAIL DATE DELIVERY MODE
07/28/2015 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 PATENT TRIAL AND APPEAL BOARD
________________

Ex parte PAUL M. FROMM
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Appeal 2013-008236
Application 12/493,780
Technology Center 1700
________________

Before TERRY J. OWENS, MARK NAGUMO, and
N. WHITNEY WILSON, Administrative Patent Judges.

OWENS, Administrative Patent Judge.

DECISION ON APPEAL

STATEMENT OF THE CASE
The Appellant appeals under 35 U.S.C. § 134(a) from the Examiner’s
rejection of claims 1and 3–19. We have jurisdiction under 35 U.S.C. § 6(b).
The Invention
The Appellant claims a method for making a printing apparatus belt.
Claim 1 is illustrative:
1. A. method of making a belt for an apparatus useful
in printing, comprising:
forming a first layer of the belt using a first material comprising a first
polymer applied directly onto an inner surface of a mandrel, the first layer
including a first outer surface facing the inner surface of the mandrel and a first
inner surface;
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Application 12/493,780

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forming a second layer of the belt using a second material comprising a
second polymer applied over the first inner surface, the second layer including
a second inner surface; and
removing the belt from the mandrel, wherein forming the first layer of
the belt comprises heating the first material to a first temperature to solidify the
first material; and
forming the second layer of the belt comprises heating the second
material to a second temperature lower than the first temperature to solidify the
second material over the first layer.

The References
Naus US 6,500,367 B2 Dec. 31, 2002
Matsuo US 6,641,760 B2 Nov. 4, 2003
Longhenry US 2007/0190320 A1 Aug. 16, 2007
The Rejections
The claims stand rejected under 35 U.S.C. § 103 as follows: claims 1,
3, 4, 10, 13, and 14 over Naus, claims 5–9 and 15–18 over Naus in view of
Longhenry and claims 11, 12, and 19 over Naus in view of Matsuo.
OPINION
We reverse the rejections. We need address only the independent
claims, i.e., claims 1 and 15. Those claims require forming a belt’s first
layer using a first material comprising a first polymer and heating the first
material to a first temperature to solidify the first material, and forming, over
the first layer, the belt’s second layer using a second material comprising a
second polymer and heating the second material to a second temperature
lower than the first temperature to solidify the second material over the first
layer. To meet those claim requirements the Examiner relies upon Naus
(Ans. 2–3).
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Application 12/493,780

3
Naus discloses a method for manufacturing a seamless multilayered
transfuse belt for use in an image forming system (col. 1, ll. 7–9). Naus
forms an intermediate layer (which corresponds to the Appellant’s first layer
and preferably is carbon black liquid silicone) and cures it at about 32 ºC to
about 175 ºC (about 150 ºC for most applications) for about 2 to about
20 minutes to render it hard to the touch but not fully solidified, applies to
the intermediate layer one or more layers of an additional liquid polymer
(which corresponds to the Appellant’s second layer and preferably is liquid
silicone rubber) and a fabric carcass backing, and then performs a final cure
which, depending upon the type of silicone rubber or other polymer used, is
in most situations at 32 ºC to 180 ºC for 1 to 2 hours, to completely solidify
the multi-layered structure (col. 4, ll. 45–46, 59; col. 4, l. 67 – col. 5, l. 2;
col. 5, l. 60 – col. 6, l. 16; col. 6, ll. 42–47; Fig. 3).
The Examiner points out that “Naus discloses that the first
temperature is within the range of 32-175º C. and the second temperature is
within the range of 32-180º C depending on the cure properties of the
polymer in use” (Ans. 3), and argues that “the skilled artisan would
recognize that it would have been obvious to try curing the first layer at a
temperature higher than the second layer” (id.).
Setting forth a prima facie case of obviousness requires establishing
that the applied prior art would have provided one of ordinary skill in the art
with an apparent reason to modify the prior art to arrive at the claimed
invention. See KSR Int’l Co. v. Teleflex Inc., 550 U.S. 398, 418 (2007).
The Examiner’s assertion that it would have been obvious for one of
ordinary skill in the art to try curing Naus’ intermediate layer at a higher
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Application 12/493,780

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temperature than the final curing temperature does not provide the required
apparent reason why one of ordinary skill in the art would have done so.
Thus, the Examiner has not carried the burden of establishing a prima
facie case of obviousness of the Appellant’s claimed method.
DECISION/ORDER
The rejections under 35 U.S.C. § 103 of claims 1, 3, 4, 10, 13, and 14
over Naus, claims 5–9 and 15–18 over Naus in view of Longhenry and
claims 11, 12, and 19 over Naus in view of Matsuo are reversed.
It is ordered that the Examiner’s decision is reversed.
REVERSED
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