Ex Parte Goebel et al

Patent Trial and Appeal Board

Jun 24, 2013

10973043 (P.T.A.B. Jun. 24, 2013)

UNITED STATES PATENT AND TRADEMARKOFFICE
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.
10/973,043 10/25/2004 William K. Goebel N81731AJA 1420
1333 7590 06/25/2013
EASTMAN KODAK COMPANY
PATENT LEGAL STAFF
343 STATE STREET
ROCHESTER, NY 14650-2201
EXAMINER
VAJDA, PETER L
ART UNIT PAPER NUMBER
1721
MAIL DATE DELIVERY MODE
06/25/2013 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 WILLIAM K. GOEBEL,
MATTHEW C. EZENYILIMBA,
DONALD S. RIMAI,
and JAMES H. ANDERSON
__________

Appeal 2013-000187
Application 10/973,043
Technology Center 1700
___________

Before ADRIENE LEPIANE HANLON, CHARLES F. WARREN, and
CATHERINE Q. TIMM, Administrative Patent Judges.

HANLON, Administrative Patent Judge.

DECISION ON APPEAL

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A. STATEMENT OF THE CASE
This is a decision on appeal under 35 U.S.C. § 134 from an Examiner’s
decision finally rejecting claims 1-8, 11, and 12.1 We have jurisdiction under
35 U.S.C. § 6(b).
We REVERSE.
Claim 1, reproduced below, is representative of the subject matter on appeal.
1. A method of adjusting the charge-to-mass ratio of
negatively charged particulate toner in two-component developers
formed from multiple batches of particulate toner, said method
comprising:
a. forming a mixture of said particulate toner having a
fineness index in the range from about 1.0 to about 1.3 and a
predetermined amount of a blend of two or more types of negatively
charged silica particles, each type of said negatively charged silica
particles having a different functional group appended thereto;
b. mechanically agitating said mixture thereby causing said
silica particles to become attached to the surfaces of said particulate
toner; and
c. mixing said particulate toner, having said silica particles
attached, with a pre-selected particulate carrier, in a predetermined
ratio, to form said developer;
wherein the ratio of the two or more types of negatively
charged silica particles is varied in step (a) to adjust the charge-to-
mass ratio in the formed developer in response to batch-to-batch
toner size variations in the multiple batches of particulate toner, so
that particulate toner from each of the multiple batches will
tribocharge to the same charge-to-mass ratio.
App. Br., Claims Appendix (emphasis added).2

1 Claims 13-18 are also pending but have been withdrawn from consideration.
2 Appeal Brief dated April 23, 2012.
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The Appellants seek review of the following Examiner’s rejections:
(1) the rejection of claims 1-8, 11, and 12 under 35 U.S.C. § 103(a) as
unpatentable over the combination of Gutman,3 Srinivasan,4 and Gotoh5; and
(2) the rejection of claims 1-8, 11, and 12 under 35 U.S.C. § 103(a) as
unpatentable over the combination of Duggan,6 Gutman, Srinivasan, Gotoh, and
Stamp.7
B. ISSUE
A Decision on Appeal was previously entered in this Application on July 1,
2011 by this panel (Appeal 2009-012463). One of the issues in that appeal was
whether the negatively charged silica particle blend recited in step (a) of claim 1
was rendered obvious by the prior art of record. We concluded that the claimed
blend was rendered obvious by the negatively chargeable additives disclosed in
Gutman which include silica particles treated with a mixture of hexamethyl-
disalazane and triethoxy-propyl-amino-silane. Decision 5.
The Appellants subsequently amended claim 1 to add, inter alia, the
following language:
wherein the ratio of the two or more types of negatively
charged silica particles is varied in step (a) to adjust the charge-to-
mass ratio in the formed developer in response to batch-to-batch toner
size variations in the multiple batches of particulate toner, so that
particulate toner from each of the multiple batches will tribocharge to
the same charge-to-mass ratio.

3 US 2003/0017406 A1 published January 23, 2003.
4 US 2001/0046635 A1 published November 29, 2001.
5 Powder Technology Handbook 6-11 (Keishi Gotoh et al. eds., 2nd ed., 1997).
6 US 6,087,059 issued July 11, 2000.
7 US 6,365,316 B1 issued April 2, 2002.
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See Ans. 12.8
The dispositive issue in this appeal is whether one of ordinary skill in the art
would have adjusted the charge-to-mass ratio in the developer of Gutman as
recited in claim 1 (i.e., by varying the ratio of two more or types of negatively
charged silica particles, wherein each type of negatively charged silica particle has
a different functional group appended thereto) based on the prior art of record.
C. DISCUSSION
Gutman discloses a method of making a developer comprised of a toner and
a carrier. The method includes the step of preparing a surface additive package
comprising a mixture of at least one negative additive and at least one positive
additive, wherein the ratio of the negative additive to the positive additive in the
mixture is selected based on the charging effect of the carrier.9 Gutman, para.
[0021].
Srinivasan discloses a developer comprising, inter alia, toner particles
having silica dispersed on the outer surfaces thereof. Srinivasan, para. [0016].
Srinivasan discloses that silica is added to the toner to maintain the toner charge to
mass (Q/m) characteristic and the amount of silica added varies depending on the
particle size of the toner. Srinivasan, paras. [0014], [0015].
The Appellants argue:
What is not disclosed in or otherwise taught or suggested by either
reference . . . is the specific requirement of the present invention to
vary the ratio of two or more types of negatively charged silica
particles to adjust the charge-to-mass ratio in response to batch-to-

8 Examiner’s Answer dated July 26, 2012.
9 As explained in the previous appeal, Duggan is cumulative of the teachings of
Gutman. Decision 5, n. 8.
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batch toner size variations in multiple batches of particulate toner, so
that particulate toner from each of the multiple batches will
tribocharge to the same charge-to-mass ratio.
App. Br. 4 (emphasis in original).
The Examiner argues:
[T]he applicant has failed to address the specific teachings of
Srinivasan relied upon by the Examiner which explicitly states the
benefits of adjusting the amount of charged silica particles to be
added to a batch of toner particles in order to adjust the charge-to-
mass ratio of those particles based on the particle size distribution.
Clearly such a teaching applies equally to employing two types of
negatively charged silica particles each with a different silane-based
derivative coated thereon as to employing a single negatively charged
silica particle with two silane-based derivatives coated thereon[, such
as the silica particles disclosed in Gutman].
Ans. 15 (emphasis added).
In response, the Appellants urge that they “clearly have addressed such
argument by explaining that adjusting the amount of the silica as may be taught by
Srinivasan is not a teaching to adjust the ratio of two types of negatively charged
silicas.” Reply Br. 2 (emphasis in original).10
The Appellants’ argument is supported by the record. We recognize that the
negatively chargeable additives disclosed in Gutman include silica particles treated
with a mixture of two silane-based derivatives. However, the Examiner has not
directed us to any disclosure in the prior art of record that would have led one of
ordinary skill in the art to vary the ratio of these silane-based derivatives in the
mixture to achieve a desired charge-to-mass ratio as recited in claim 1. For this
reason, we will not sustain the § 103(a) rejections on appeal.

10 Reply Brief dated September 26, 2012.
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D. DECISION
The decision of the Examiner is reversed.

REVERSED

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