Ex Parte Fu et al

Board of Patent Appeals and Interferences

Mar 31, 2008

10320809 (B.P.A.I. Mar. 31, 2008)

UNITED STATES PATENT AND TRADEMARK OFFICE
____________

BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
____________

Ex parte MIN-HONG FU, COLLEEN A. HELBIG,
KENT J. EVANS, KATHLEEN M. CARMICHAEL,
and DAVID M. SKINNER
____________

Appeal 2008-0601
Application 10/320,809
Technology Center 1700
____________

Decided: March 31, 2008
____________

Before MICHAEL R. FLEMING, Chief Administrative Patent Judge, and
BRADLEY R. GARRIS, ROMULO H. DELMENDO, SALLY G. LANE,
and MICHAEL P. COLAIANNI Administrative Patent Judges.

DELMENDO, Administrative Patent Judge.

DECISION ON APPEAL
STATEMENT OF THE CASE
This appeal under 35 U.S.C. § 134 (2002) from a final rejection of
claims 1, 2, and 4-43 is before an expanded panel of this Board. We have
jurisdiction under 35 U.S.C. § 6(b) (2002).
Appeal 2008-0601
Application 10/320,809

We AFFIRM.
Appellants explain that, in the art of electrophotography, an
electrophotographic plate comprising a photoconductive insulating layer on
a conductive layer is imaged by first uniformly electrostatically charging the
surface of the photoconductive layer. Then, the plate is exposed to a pattern
of activating electromagnetic radiation such as light, which selectively
dissipates the charge in the illuminated areas of the photoconductive
insulating layer while leaving behind an electrostatic latent image in the non-
illuminated areas. This electrostatic latent image may then be developed to
form a visible image by depositing finely divided electroscopic toner
particles on the surface of the photoconductive insulating layer, which toner
image can then be transferred to a suitable receiving member such as paper.
Spec. 1, l. 17 to 2, l. 2. Appellants state that they invented an
electrostatographic imaging member having a charge transport layer
containing a specified surfactant that reduces crystallization of the charge
transport layer material. Spec. 1, ll. 4-7.
Claim 1, which is representative of the appealed claims, reads as
follows:
1. An imaging member comprising:
an electrically conductive substrate or a substrate
comprising an electrically conductive layer,
a charge generating layer,
a charge transport layer consisting of at least one charge
transport component, a poly(fluoroacrylate)-graft-poly(methyl
methacrylate) surfactant which reduces the crystallization of the
at least one charge transport component, and a polymer binder.
The Examiner rejected claims 1, 2, and 4-43 under 35 U.S.C.
§ 103(a).
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The prior art relied upon by the Examiner in rejecting the claims on
appeal is:
Borsenberger 4,471,039 Sep. 11, 1984
Akiyoshi 4,837,120 Jun. 6, 1989
Yoshida 5,389,478 Feb. 14, 1995
Kubo 5,637,142 Jun. 10, 1997
Yamamoto 5,853,931 Dec. 29, 1998
Pai 6,127,077 Oct. 3, 2000
Liu 6,277,535 B1 Aug. 21, 2001
Chambers 6,326,111 B1 Dec. 4, 2001

Yamada (as translated) JP 07-199486 Aug. 4, 1995

American Chemical Society (ACS) on STN File Registry RN 376363-80-3
(Dec. 18, 2001)(hereinafter “ACS”).

Appellants’ description of the prior art, identifying commercial product GF-
300 (Spec. 4, ll. 4-6).

The Examiner rejected the claims under 35 U.S.C. § 103(a) as
follows:
I. Claims 1, 4, 9-15, 29-31, and 36-39 as unpatentable over the
combined teachings of Yamamoto, Kubo (as evidenced by
Appellants’ description at page 4, lines 4-6 of the Specification
identifying commercial product GF-300), Yoshida, Chambers,
and ACS (Ans. 7-15);
II. Claims 1, 2, 4-7, 9-23, 25, and 27-43 as unpatentable over the
combined teachings of Pai, Yamamoto, Kubo (as evidenced by
Appellants’ description at page 4, lines 4-6 of the Specification
identifying commercial product GF-300), Yoshida, Chambers,
and ACS (Ans. 16-24);
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III. Claims 1, 4, 6, and 8-15 as unpatentable over the combined
teachings of Borsenberger, Yamamoto, Kubo (as evidence by
Appellants’ description at page 4, lines 4-6 of the Specification),
Yoshida, Chambers, and ACS (Ans. 24-27);
IV. Claims 1, 4-7, 9-18, 21-25, and 27-43 as unpatentable over the
combined teachings of Liu, Yamamoto, Kubo (as evidenced by
Appellants’ description at page 4, lines 4-6 of the Specification),
Yoshida, Chambers, and ACS (Ans. 27-33); and
V. Claims 1, 4, 9-15, 18, 22, 23, 26, and 28 as unpatentable over the
combined teachings of Yamada, Akiyoshi, Yamamoto, Kubo (as
evidenced by Appellants’ description at page 4, lines 4-6
identifying commercial product GF-300), Yoshida, Chambers,
and ACS (Ans. 34-39).
Relying principally on In re Baird, 16 F.3d 380, 382 (Fed. Cir. 1992),
Appellants contend that “the Examiner has not provided a motivation for a
skilled artisan to select the specifically recited poly(fluoroacrylate)-graft-
poly(methyl methacrylate) surfactant” because “the Examiner is applying an
improper ‘obvious to try’ rationale to support the obviousness rejection.”
Substitute App. Br. 9.
The Examiner, on the other hand, asserts that Appellants “ignore the
ability of the person having ordinary skill in the electrophotographic arts to
recognize that the well-known and used commercially available GF-300
surfactant is reasonably expected to be useful as a perfluoroalkyl radical
containing surfactant taught by Yamamoto in the formation of charge
transport layers.” Ans. 44.
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ISSUE
Have Appellants shown error in the Examiner’s conclusion that the
claimed species is obvious over prior art which discloses a genus containing
the species?

FINDINGS OF FACT
1. The real party in interest is said to be XEROX
CORPORATION. Substitute App. Br. 1.
2. Appellants acknowledge that electrophotographic imaging
members comprising an electrically conductive layer, a charge
generating layer, and a charge transport layer are well known in
the prior art. Spec. 2, ll. 3-24.
3. Appellants further acknowledge that “[p]hase separation or
crystallization is an important factor in the determination of, for
example, upper limit concentration amount of the transport
molecules that can be dispersed in a binder.” Spec. 2, l. 30 to 3,
l. 3.
4. Appellants state that “[f]or example, in embodiments the charge
transport layer comprises from about 20 to about 80 percent by
weight of at least one charge transport material and about 0.01
to about 0.2 percent by weight of the surfactant.” Spec. 4, ll. 7-
9.
5. Appellants’ Specification describes a specific embodiment in
which commercial product GF-300 available from Toagosei
Chemical Industries, a poly(fluoroacrylate)-graft-poly(methyl
methacrylate) having a molecular weight of about 25,000, is
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selected as the poly(fluoroacrylate)-graft-poly(methyl
methacrylate) surfactant. Spec. 4, ll. 3-6.
6. Yamamoto, the principal prior art reference, describes a
photoreceptor for electrophotography comprising a substrate
and at least one photoconductive (OPC) layer formed on the
substrate and having a charge-generating function and a charge-
transport function, the at least one OPC layer including a top
layer containing a surfactant having a perfluoroalkyl radical.
Col. 2, ll. 37-41.
7. Appellants do not contest the Examiner’s finding that
Yamamoto does not limit the suitability of the perfluoroalkyl
surfactant to any particular species. Ans. 11; Substitute App.
Br. 9-11.
8. The Examiner found that the prior art including Yamamoto
would have led one of ordinary skill in the art to reasonably
expect that any known surfactant having a perfluoroalkyl
radical would yield successful results. Ans. 41.
9. Yamamoto describes an embodiment of a photoreceptor
comprising an aluminum substrate 10, an intermediate layer 11,
a charge-generation layer 12, and a charge-transport layer 13.
Col. 3, ll. 1-9; Figure 1.
10. Yamamoto teaches that a “paint to be used for forming the top
charge-transport layer 13 contains a surfactant which has a
perfluoroalkyl radical...” Col. 3, ll. 10-12.
11. According to Yamamoto, “[t]he paint for the top charge-
transport layer is obtained by dissolving or dispersing a charge-
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transport agent into a solvent wherein a binder is dissolved...”
Col. 3, ll. 20-22.
12. Yamamoto states that examples of the charge transport material
include poly-N-vinylcarbazole and derivatives thereof, pyres-
formaldehyde condensate and derivatives thereof, polysilane
and derivatives thereof, oxazole derivatives, oxadiazole
derivatives, monoarylamine derivatives, diaryl amine
derivatives, triarylamine derivatives, stilbene derivatives,
benzidine derivatives, pyrazoline derivatives, hydrozone
derivatives, butadiene derivatives, or mixtures of two or more
of these materials. Col. 3, ll. 24-33.
13. With respect to the binder, Yamamoto teaches resins such as
polyvinyl chloride, polyvinyl acetate, polyvinylbutyral,
polyester, polyurethane, polycarbonate, acrylic resin, phenolic
resin, or mixtures of two or more of these resins. Col. 3, ll. 33-
37.
14. As for the solvent, Yamamoto teaches the suitability of toluene,
xylene, monochlorobenzene, methyl alcohol, ethyl alcohol,
ethyl acetate, methylene chloride, tetrahydrofuran, cyclohexane,
or combinations of two or more of these solvents. Col. 3, ll. 37-
42.
15. Yamamoto teaches that the “[s]urfactant having a
perfluoroalkyl radical should be added to the paint for the
charge-transport layer in an amount from 0.01% to 1% by
weight of a solid ingredient in the paint.” Col. 3, ll. 49-52.
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16. Appellants do not dispute the Examiner’s determination that the
amounts of perfluoroalkyl-containing surfactant disclosed in
Yamamoto substantially overlap those specified for Appellants’
preferred ranges of amounts. Ans. 9; Substitute App. Br. 9-11.
17. Yamamoto discloses the advantages of the perfluoroalkyl
surfactant as follows (col. 3, ll. 52-63):
The addition of the surfactant reduces the surface tension
of the paint to thereby reduce ruggedness on the layer
surface and improves the dispersion ability of the charge-
transport agent into the binder resin to thereby increase
the mechanical strength of the layer. In addition, the
perfluoroalkyl radical in the surfactant allows the
surfactant to exude from the charge-transport layer to the
surface thereof during drying to thereby reduce the
frictional resistance of the paint after drying. These
effects as combined improve the abrasion resistance of
the charge-transport layer 13 and suppress occurring of
the flaws on the surface of the top charge-transport layer.
[Emphasis added.]

18. Yamamoto states that the charge-generation layer also contains
a surfactant having a perfluoroalkyl radical and that “[t]he
surfactant added in the charge-generation layer has a function
similar to the surfactant having a perfluoroalkyl radical added
in the charge-transport layer.” Col. 3, ll. 65-67; col. 4, ll. 25-
31.
19. Yamamoto does not describe the use of a poly(fluoroacrylate)-
graft-poly(methyl methacrylate) surfactant as the surfactant
having a perfluoroalkyl radical in the charge-transport layer.
20. Appellants do not dispute the Examiner’s factual finding that
the specified poly(fluoroacrylate)-graft-poly(methyl
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methacrylate) surfactant is a species or sub-genus falling within
Yamamoto’s disclosed genus of surfactants having a
perfluoroalkyl radical. Ans. 8-15; Substitute App. Br. 9-11.
21. Yoshida, like Yamamoto, teaches an electrophotographic
photosensitive member comprising an electroconductive
support and a photosensitive layer containing a specified
compound, wherein the photosensitive layer can be a laminate
of a charge-transport layer on a charge-generating layer or a
charge-generating layer on a charge-transport layer. Col. 2, l.
64 to col. 3, l. 18; col. 5, ll. 17-25; col. 6, 43-46.
22. Yoshida’s Example 1 describes the use of Arron GF-300 made
by Toagosei Chemical Industry Co., Ltd. as a dispersing agent
for tetrafluorethylene resin lubricant particles in the formation
of a charge-transport layer. Col. 10, l. 60 to col. 7, l. 2.
23. In Yoshida’s Example 1, a stilbene compound, polycarbonate,
and a mixture of dichloromethane and monochlorobenzene are
used as the charge transport material, the binder resin, and
solvent, respectively. Col. 10, ll. 42-60.
24. Similarly, Chambers describes, in a most preferred
embodiment, the use of GF-300 fluorine-containing surfactant
to disperse polytetrafluorethylene (PTFE) particles in the
production of a charge-transport layer additionally containing at
least a polycarbonate binder, at least one charge transport
material, and hydrophobic silica dispersed in at least one
solvent. Col. 4, ll. 33-38; col. 6, ll. 52-62.
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25. According to Chambers, “[a]ny suitable charge transport
molecule known in the art may be used,” including aromatic
amines, and “[a]ny solvent well known in the art...may be
used,” including a mixture of tetrahydrofuran and toluene. Col.
5, ll. 16-40; col. 7, ll. 8-22.
26. Appellants do not dispute the Examiner’s finding that
Yoshida’s GF-300 dispersant or Chambers’s GF-300 surfactant
is in fact a poly(fluoroacrylate)-graft-poly(methyl
methacrylate). Ans. 12-13; Substitute App. Br. 9-11.
27. The teachings of the remaining references are either cumulative
to Yamamoto, Yoshida, and Chambers or are necessary only to
address limitations of claims that are not separately argued.
28. None of the references disclose the use of poly(fluoroacrylate)-
graft-poly(methyl methacrylate) surfactant in a charge-transport
layer consisting of a charge transport component, the surfactant,
and a polymer binder as required by claim 1.
29. Appellants do not rely on any secondary considerations of
nonobviousness, such as evidence of unexpected results.

PRINCIPLES OF LAW
“Section 103 forbids issuance of a patent when the ‘differences
between the subject matter sought to be patented and the prior art are such
that the subject matter as a whole would have been obvious at the time the
invention was made to a person having ordinary skill in the art to which the
subject matter pertains.’” KSR Int’l Co. v. Teleflex, Inc., 127 S. Ct. 1727,
1734 (2007). KSR reaffirms the analytical framework set out in Graham v.
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John Deere Co. of Kansas City, 383 U.S. 1 (1966), which mandates that an
objective obviousness analysis includes: (1) determining the scope and
content of the prior art; (2) ascertaining the differences between the prior art
and the claims at issue; and (3) resolving the level of ordinary skill in the
pertinent art. KSR, 127 S. Ct. at 1734. Secondary considerations such as
commercial success, long felt but unsolved needs, or failure of others
“‘might be utilized to give light to the circumstances surrounding the origin
of the subject matter sought to be patented.’” Id. (quoting Graham, 383 U.S.
at 17-18.).
KSR states:
Often, it will be necessary for a court to look to interrelated
teachings of multiple patents; the effects of demands known to
the design community or present in the marketplace; and the
background knowledge possessed by a person having ordinary
skill in the art, all in order to determine whether there was an
apparent reason to combine the known elements in the fashion
claimed by the patent at issue.
KSR, 127 S. Ct. at 1740-41.
KSR further instructs “that when a patent claims a structure already
known in the prior art that is altered by mere substitution of one element for
another known in the field, the combination must do more than yield a
predictable result.” KSR, 127 S. Ct. at 1740.
In expressly rejecting the “obvious to try” argument in support of
patentability, KSR states:
The same constricted analysis led the Court of Appeals to
conclude, in error, that a patent claim cannot be proved obvious
by merely showing that the combination of elements was
“obvious to try.”...When there is a design need or market
pressure to solve a problem and there are a finite number of
identified, predictable solutions, a person of ordinary skill has
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good reason to pursue the known options within his or her
technical grasp. If this leads to the anticipated success, it is
likely the product not of innovation but of ordinary skill and
common sense. In that instance the fact that a combination was
obvious to try might show that it was obvious under § 103.
KSR, 127 S. Ct. at 1742.

ANALYSIS
In each of the Examiner’s five grounds of rejection, Appellants argue
the claims together. Furthermore, Appellants rely on the same arguments for
all five rejections. According to Appellants, “[t]he sole issue in the appeal is
whether the use of the specific poly(fluoroacrylate)-graft-poly(methyl
methacrylate) surfactant is rendered obvious.” Substitute App. Br. 9. We
therefore confine our discussion to representative claim 1, which is common
to all five rejections, and address the issue raised by Appellants’ common
arguments accordingly.
The Examiner’s factual findings as to the scope and content of the
prior art are undisputed. The Examiner found that Yamamoto differs from
the subject matter of appealed claim 1 only in that the prior art reference,
while describing a genus of charge-transport layer surfactants having a
perfluoroalkyl radical, does not disclose the claimed poly(fluoroacrylate)-
graft-poly(methyl methacrylate) species. Facts 5, 6, and 8-20. The
Examiner also found, and again Appellants do not dispute, that Yamamoto
does not limit the disclosed genus of surfactants having a perfluoroalkyl
radical to any particular species. Fact 7. Thus, the Examiner found that the
prior art would have led one of ordinary skill in the art to reasonably expect
that any known surfactant having a perfluoroalkyl radical would yield
successful results. Fact 8.
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To resolve the difference between Yamamoto and the subject matter
of claim 1, the Examiner appropriately and thoroughly considered the
teachings of several other references including Yoshida and Chambers.
Facts 21-26. Both of these references teach that GF-3001 is used as a
dispersant or surfactant for PTFE particles in a charge-transport layer
containing the same or similar charge transport material, polymer binder,
and solvent described in Yamamoto. Facts 12-15 and 22-25.
Based on these findings, we agree with the Examiner that the
teachings of the prior art establish a prima facie case of obviousness.
Applying KSR, we find that the design need or problem to be solved in
Yamamoto is to select a suitable surfactant having a perfluoroalkyl radical to
disperse the charge transport material and polymer binder in a solvent to
thereby increase mechanical strength. Fact 17. Hence, the dispersing
function of Yamamoto’s surfactant is the same or similar to that disclosed
for Appellants’ claimed surfactant, which is to disperse the charge transport
material. Fact 3. While Yamamoto’s genus of surfactants is arguably broad,
it nevertheless consists of only a finite number of known perfluoroalkyl
surfactants that predictably solve the dispersion problem of the charge
transport agent into the binder resin. Accordingly, a person having ordinary
skill in the art would have had “good reason to pursue” the use of GF-300,
the claimed surfactant species. It would have been within the “technical
grasp” of that person having ordinary skill in the art to understand that this
known surfactant, which was readily available in commerce, has the

1 Appellants do not contest the Examiner’s finding that the GF-300
described in Yoshida and Chambers is the same GF-300 described as a
poly(fluoroacrylate)-graft-poly(methyl methacrylate) surfactant in their own
Specification. Fact 26.
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perfluoroalkyl group as required by Yamamoto. Because that person having
ordinary skill in the art would have “anticipated success” in trying GF-300
perfluoroalkyl surfactant in view of Yamamoto’s teachings, the subject
matter of appealed claim 1 would have been prima facie obvious over
Yamamoto alone. KSR, 127 S. Ct. at 1742. See also Merck & Co., Inc. v.
Biocraft Labs., Inc., 874 F.2d 804, 807 (Fed. Cir. 1989)(rejecting “obvious
to try” argument where the prior art disclosed a “multitude of effective
combinations” that did not “render any particular formulation less obvious”
and where the claimed composition was “used for the identical purpose
taught by the prior art.”).
Not only does the Examiner’s analysis satisfy an “obvious to try”
standard, it passes muster even under a more rigorous teaching, suggestion,
or motivation test. The Yoshida and Chambers references demonstrate that
GF-300, i.e., the claimed poly(fluoroacrylate)-graft-poly(methyl
methacrylate), yielded successful results (i.e., dispersing of materials) when
used in a charge-transport layer of an imaging member chemically and
structurally similar to that shown in Yamamoto. While Yoshida and
Chambers teach that the GF-300 disperses PTFE particles in the charge-
transport layer, GF-300 imparts an effect similar to that of the surfactant
described in Yamamoto because its function is to disperse solid particles.
Furthermore, the GF-300 surfactant of Yoshida or Chambers performs its
dispersing function in charge transport layers that contain at least similar
charge transport material, polymeric binder, and solvent as those described
in Yamamoto. Thus, a person having ordinary skill in the art would have
had a reasonable expectation that GF-300 would successfully perform its
dispersing function in the charge-transport layer of Yamamoto. Under these
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circumstances, we share the Examiner’s reasoned determination that one of
ordinary skill in the art would have found it obvious to use GF-300 as the
perfluoroakyl radical containing surfactant in Yamamoto’s method (e.g., in
lieu of Unidyne DS-401 which is a commercially available surfactant
exemplified by Yamamoto) with a reasonable expectation of anticipated
success. KSR 127 S. Ct. at 1740 (“[W]hen a patent claims a structure
already known in the prior art that is altered by the mere substitution of one
element for another known in the field, the combination must do more than
yield a predictable result.”).
Appellants' reliance on In re Baird, 16 F.3d 380, is misplaced. The
Baird case involved a claim to a flash fusible toner comprising a bisphenol
A polyester containing an aliphatic dicarboxylic acid selected from the
group consisting of succinic acid, glutaric acid, and adipic acid. The prior
art reference disclosed the polymeric esterification product of a dicarboxylic
acid and a diphenol having a generic formula reciting a broad range of
variables and thus encompassing a large number of different diphenols, one
of which was bisphenol A. The claim was rejected under 35 U.S.C. § 103
over this reference, and the Board upheld the rejection. Our reviewing court,
however, reversed because the prior art “appears to teach away from the
selection of bisphenol A by focusing on more complex diphenols...” In re
Baird, 16 F.3d at 382. The court instructed: “A disclosure of millions of
compounds does not render obvious a claim to three compounds, particularly
when that disclosure indicates a preference leading away from the claimed
compounds.” Id. at 383.
Here, by contrast, the prior art teachings would not have taught away
from Appellants’ claimed species of poly(fluoroacrylate)-graft-poly(methyl
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methacrylate) surfactant. To the contrary, a person having ordinary skill in
the art would have had a reasonable expectation of anticipated success.
Yamamoto discloses a genus of perfluoroalkyl surfactants constituting a
large but finite number of surfactants with no preference for a particular
class of surfactants having a significantly more complex structure relative to
Appellants’ claimed surfactant, let alone an affirmative indication that
Appellants’ claimed surfactant would be unsuitable. Moreover, both
Yoshida and Chambers demonstrate that the recited species (i.e., GF 300)
has successfully yielded predictable results in terms of dispersing polymeric
solids in charge transport layers similar to those disclosed in Yamamoto.
We expressly reject the notion that a claim reciting a species is per se
patentable when the prior art discloses a genus encompassing a broad but
finite number of known options which include the claimed species. We hold
that such a per se approach would be contrary to the clear command of our
reviewing court.2 That is not to say, however, that an applicant would never
be entitled to a patent in a situation as here. For example, KSR and Graham,
as well as a myriad of precedents of our reviewing court, teach that
secondary considerations such as unexpected results may confer
patentability. Also, for example, patentability may be shown if the prior art
teaches away from the species within the genus. But here, Appellants did
not rely on any such persuasive evidence in support of nonobviousness.
Our ruling is consistent with additional legal authority. In In re
Corkill, 771 F.2d 1496 (Fed. Cir. 1985), the claim was directed to a
detergent composition comprising specified amounts of a specific zeolite

2 Cf. In re Ochiai, 71 F.3d 1565, 1572 (Fed. Cir. 1995)(“[R]eliance on per
se rules of obviousness is legally incorrect and must cease.”).
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(zeolite A) and specified amounts of a specific water-soluble surface-active
agent. A first reference to Corey taught a detergent composition that may
contain hydrated zeolites, and a second reference to Milton showed Corkill’s
claimed zeolite species (zeolite A). Id. at 1499. Corkill argued that there
were many zeolites other than zeolite A and that there were “over 35
different types of zeolite framework structures and an infinite number of
zeolites.” Id. at 1500. Corkill further relied on declaration evidence
asserting that it cannot be predicted how any candidate will work in a
detergent composition and that testing was necessary. Id. Our reviewing
court rejected these arguments by stating that the arguments did not
“overcome Corey’s teaching that hydrated zeolites will work.” Id.
Appellants contend that neither Yoshida nor Chambers “discussed the
problem of charge transport molecule crystallization” and that “[t]herefore,
they do not provide the necessary teachings.” Substitute App. Br. 11. We
do not find this argument persuasive. Appellants’ Specification informs one
skilled in the relevant art that “crystallization” is related to the amount of
charge transport material that can be dispersed in a binder. Fact 3.
Yamamoto teaches that the surfactant having a perfluoroalkyl radical
“improves the dispersion ability of the charge-transport agent into the binder
resin...” Fact 17. Thus, Yamamoto uses the perfluoroalkyl surfactant for the
same or similar reason as Appellants. Appellants have not proven otherwise.
Even if Appellants’ purpose for using the claimed surfactant is different
from that of the prior art, this does not defeat the Examiner’s prima facie
case of obviousness because any need or problem known in the field of
endeavor at the time of the invention and addressed by the prior art can
provide a reason for combining the elements in the manner claimed. KSR,
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127 S. Ct. at 1742. See also In re Kemps, 97 F.3d 1427, 1430 (Fed. Cir.
1996) and In re Dillon, 919 F.2d 688, 693 (Fed. Cir. 1990)(en banc) (the
motivation to combine the prior art references need not be identical to that of
Applicants).
Appellants argue that Yoshida and Chambers teach the use of GF-300
surfactant to disperse PTFE, which is excluded by the language “consisting
of” in claim 1. Substitute App. Br. 11. While it is true that Yoshida and
Chambers teach the use of GF-300 to disperse PTFE, these references
suggest that GF-300 is effective to disperse polymeric particles in a charge-
transport layer similar to that of Yamamoto. Thus, one of ordinary skill in
the art would have reasonably expected that it would impart a similar effect
in terms of dispersing solid particles when used in Yamamoto. Appellants’
argument does not take into account what the collective teachings of the
prior art would have suggested to one of ordinary skill in the art and is
therefore ineffective to rebut the Examiner’s prima facie case of
obviousness. In re Keller, 642 F.2d 413, 425 (CCPA 1981)(“The test for
obviousness is not whether the features of a secondary reference may be
bodily incorporated into the structure of the primary reference; nor is it that
the claimed invention must be expressly suggested in any one or all of the
references. Rather, the test is what the combined teachings of the references
would have suggested to those of ordinary skill in the art.”).
We have fully considered the other arguments advanced by
Appellants in their Supplemental Appeal Brief and Reply Brief but do not
find any of them to be persuasive.

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CONCLUSION
On this record, Appellants have failed to show error in the Examiner’s
conclusion that the claimed species is obvious over prior art which discloses
a genus containing the species.

DECISION
The Examiner’s rejections of claims 1, 2, and 4-43 under 35 U.S.C. §
103 are sustained.
The Examiner’s decision 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)(1)(iv).

AFFIRMED

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