Ex Parte Jin et al

Board of Patent Appeals and Interferences

Feb 18, 2011

11446894 (B.P.A.I. Feb. 18, 2011)

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.
11/446,894 06/05/2006 Xin Jin H10507CFR 2581
7590 02/22/2011
Paul A. Leipold
Patent Legal Staff
Eastman Kodak Company
343 State Street
Rochester, NY 14650-2201
EXAMINER
AHVAZI, BIJAN
ART UNIT PAPER NUMBER
1761
MAIL DATE DELIVERY MODE
02/22/2011 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 BOARD OF PATENT APPEALS
AND INTERFERENCES
__________

Ex parte XIN JIN and DOUGLAS E. GARMAN
__________

Appeal 2010-010522
Application 11/446,894
Technology Center 1700
__________

Before TONI R. SCHEINER, DONALD E. ADAMS, and
STEPHEN WALSH, Administrative Patent Judges.

WALSH, Administrative Patent Judge.

DECISION ON APPEAL1
This is an appeal under 35 U.S.C. § 134(a) involving claims to a fuser
roller coating composition. The Patent Examiner rejected the claims as
obvious. We have jurisdiction under 35 U.S.C. § 6(b). We reverse.

1 The two-month time period for filing an appeal or commencing a civil
action, as recited in 37 C.F.R. § 1.304, or for filing a request for rehearing,
as recited in 37 C.F.R. § 41.52, begins to run from the “MAIL DATE”
(paper delivery mode) or the “NOTIFICATION DATE” (electronic delivery
mode) shown on the PTOL-90A cover letter attached to this decision.

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Application 11/446,894

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STATEMENT OF THE CASE
The invention concerns “an improved coating composition for
manufacturing fuser members” that are “useful for heat-fixing a heat-
softenable toner material to a substrate.” (Spec. 1, ll. 4-6.) According to the
Specification, the addition of 4,4'-(hexafluoroisopropylidene) diphenol
(bisphenol AF) into the fluoropolymer latex coating mixture used to coat
fuser rollers “can increase the lifetime of the coating composition.” (Id. at 4,
l. 29 - 5, l. 1.) Additionally, “the bisphenol AF can help to provide the
degree of crosslinking of the fluoropolymer latex coating upon curing.” (Id.
at 5, ll. 4-6.)
Claims 1-7, which are all the pending claims, are on appeal. Claim 1
is representative and reads as follows:
1. A fuser roller coating composition
comprising:
a fluorocopolymer;
an aliphatic ketone organic solvent;
metal oxide particles;
a curing agent comprising a benzyltriphenylphosphonium
phenolate salt and an amount of bisphenol residue; and
a sufficient amount of 4,4'-(hexafluoroisopropylidene)
diphenol added in addition to the bisphenol residue in the curing agent to
extend the time at which viscosity of the composition quadruples.

The Examiner rejected the claims as follows:
• claims 1, 2, 6 and 7 under 35 U.S.C. § 103(a) as unpatentable over
Eddy2 and Chen ‘805;3 and

2 US Patent No. 5,017,432 issued to Clifford O. Eddy, May 21, 1991.
3 Patent Application Publication No. US 2005/0008805 A1 by Jiann-Hsing
Chen et al., published Jan. 13, 2005.
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• claims 1-5 and 7 under 35 U.S.C. §103(a) as unpatentable over
Chen ‘759,4 Schmiegel,5 and Chen ‘805.

OBVIOUSNESS
The Issues
Eddy and Chen ‘805
The Examiner’s position is that Eddy disclosed a fuser member and a
method for fusing toner images in electrostatographic reproducing apparatus.
The Examiner found that Eddy disclosed that the fuser member has a fusing
surface comprising polyvinylidenefluoridehexafluoropropylene-
tetrafluorethylene) containing a metal oxide filler. (Ans. 3-4.) The
Examiner also found that Eddy disclosed using the curing agent Viton
Curative No. 50™ which comprises bisphenol AF and benzyl
triphenylphosphonium phenolate salt. (Id. at 4.) Additionally, the Examiner
found that Eddy disclosed coating the surface of the fuser member, e.g., a
roll, using an aliphatic ketone organic solvent. (Id.) However, the Examiner
found that Eddy did not disclose adding a sufficient amount of 4,4'-
(hexafluoroisopropylidene) diphenol in addition to the bisphenol residue in
the curing agent to extend the time at which viscosity of the composition
quadruples. (Id.)
The Examiner found that Chen ‘805 disclosed an improved fusing
station, including a pressure roller and a fuser roller, for fusing heat
softenable toners to a receiver such as paper. (Id. at 5.) The Examiner also

4 US Patent No. 5,547,759 issued to Jiann-Hsing Chen, Aug. 20, 1996.
5 US Patent No. 4,489,196 issued to Walter W. Schmiegel, Dec. 18, 1984.

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found that Chen disclosed using a curing agent consisting of a dihydroxy
aromatic compound selected from the group containing bisphenol A
(hexafluoropropylidene), bisphenol AF (of 4,4'-isoprophylidene diphenol),
hydroquinone, and combinations thereof. (Id.)
According to the Examiner, it would have been obvious to a person of
ordinary skill in the art at the time the invention was made to have provided
Eddy’s fuser member with a curing agent selected from the group containing
bisphenol A, bisphenol AF, hydroquinone, and combinations thereof, as
taught by Chen ‘805 to significantly improve the frictional characteristics of
the fuser member. (Id.)
Chen '759, Schmiegel, and Chen ‘805
The Examiner’s position is that Chen '759 disclosed coated fuser
members, including a fuser roller, comprising a fluoropolymer resin bonded
to a fluoroelastomer layer, a bisphenol, a metal oxide, an aliphatic ketone
organic solvent, and a curing agent including organophosphonium salts.
(Ans. 6.) The Examiner found that Chen '759 disclosed benzyl
triphenylphosphonium chloride as an example of an organophosphonium
salt, but did not specifically disclose benzyl triphenylphosphonium
phenolate salt. (Id.) However, the Examiner found that Schmiegel
disclosed a curable fluoropolymer composition in which a quaternary
phosphonium salt could be used as an accelerator. (Id.) Schmiegel
disclosed that such accelerators included benzyl triphenylphosphonium salts,
such as chloride, bromide, and phenolate. (Id.) According to the Examiner,
it would have been obvious to a skilled artisan that the anion is simply the
counter ion and that one could choose to use the phenolate salt instead of the
chloride salt as the curing agent in Chen '759. (Id.)
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Further, the Examiner found that the combination of Chen '759 and
Schmiegel did not disclose adding a sufficient amount of 4,4'-
(hexafluoroisopropylidene) diphenol in addition to the bisphenol residue in
the curing agent to extend the time at which viscosity of the composition
quadruples. (Id. at 7.) However, the Examiner again found that Chen ‘805
disclosed using a curing agent consisting of a dihydroxy aromatic
compound, selected from the group containing bisphenol A
(hexafluoropropylidene), bisphenol AF (of 4,4'-isoprophylidene diphenol),
hydroquinone, and combinations thereof. (Id.)
According to the Examiner, it would have been obvious to a person of
ordinary skill in the art at the time the invention was made to have provided
the fuser member of Chen '759 and Schmiegel with a curing agent selected
from the group containing bisphenol A, bisphenol AF, hydroquinone, and
combinations thereof as taught by Chen ‘805 to significantly improve the
frictional characteristics of the fuser member. (Id. at 7-8.)
Appellants’ Contentions
With respect to both rejections, Appellants contend that that
combining Chen ‘805 with Eddy, or with the combination of Chen '759 and
Schmiegel, would not result in the claimed invention. (App. Br. 3, 5.)
According to Appellants, Chen ‘805 “does not teach the use of any diphenol
aromatic compounds in addition to the bisphenol residue of the curing agent
itself for any reason, but rather teaches alternative diphenol aromatic
compounds as the bisphenol residue of the curing agent.” (Id. at 5.)
The issue with respect to both of these rejections is whether the
Examiner established that the cited references would have made it obvious
to a person of ordinary skill in the art at the time the invention was made to
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add to the prior art fuser roller coating compositions a sufficient amount of
4,4'-(hexafluoroisopropylidene) diphenol, in addition to the bisphenol
residue in the curing agent, to extend the time at which viscosity of the
composition quadruples.

Findings of Fact
1. We agree with the Examiner’s specific findings regarding the scope
and content of the prior art references. (See Ans. 3-8.)

Principles of Law
In rejecting claims under 35 U.S.C. § 103, the Examiner bears the
initial burden of presenting a prima facie case of obviousness. See In re
Rijckaert, 9 F.3d 1531, 1532 (Fed. Cir. 1993).
A conclusion that the claimed subject matter would have been prima
facie obvious must be supported by evidence, as shown by some objective
teaching in the prior art. See In re Fine, 837 F.2d 1071, 1074 (Fed. Cir.
1988).

Analysis
We agree with Appellants that the Examiner has not established that
the prior art taught or suggested a fuser roller coating composition
comprising a sufficient amount of 4,4'-(hexafluoroisopropylidene) diphenol,
in addition to the bisphenol residue in the curing agent, to extend the time at
which viscosity of the composition quadruples. The Examiner
acknowledged that neither Eddy nor the combination of Chen '759 and
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Schmiegel taught this claim limitation. (See Ans. 4, 7.) For each rejection,
the Examiner relied upon Chen ‘805 as providing this teaching. (Id. at 5, 7.)
Specifically, the Examiner found that Chen ‘805 disclosed using a curing
agent consisting of a dihydroxy aromatic compound, selected from the group
containing bisphenol A, bisphenol AF, hydroquinone, and combinations
thereof. (Ans. 5.) However, the Examiner did not articulate any reasoning
as to how or why this teaching in Chen ‘805 would have motivated a skilled
artisan to add one of the disclosed dihydroxy aromatic compounds to a
composition that already contained a curing agent comprising bisphenol.
In the Response to Argument section of the Answer, the Examiner
explained that: (a) Chen ‘805 taught the use of CURE 50™ as the curing
agent, which comprised a mixture of 1 part bisphenol AF to 4 parts
benzyltriphenyl phosphonium chloride (i.e., 0.25:1 ratio); and (b) Chen ‘805
further taught that the ratio of the dihydroxy aromatic compound (i.e.,
bisphenol) to benzyltriphenyl phosphonium chloride may vary from 1.5:1 to
9:1 part. (Ans. 9.) According to the Examiner, Chen’s teachings that the
ratio of components may vary indicates that a sufficient amount of 4,4'-
(hexafluoroisopropylidene) diphenol is added in addition to the bisphenol
residue in the curing agent. (Id.) However, this reasoning was not provided
as a basis for the rejection, and does not appear to have sound evidentiary
support. As Appellants explain, it appears that Chen ‘805 inadvertantly
reversed the component ratio in CURE 50. (See Reply Br. 2.) Moreover,
even if the disclosure of the ratio of components in CURE 50™ was not
reversed, the Examiner still has not established that the teaching that Chen’s
varying ratio teaching suggested adding enough 4,4'-
(hexafluoroisopropylidene) diphenol, in addition to the bisphenol residue in
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the curing agent, to extend the time for quadrupling viscosity. (See Ans. 9-
10.) Further, the Examiner has not established (or addressed) that Chen ‘805
taught or suggested what amount of 4,4'-(hexafluoroisopropylidene)
diphenol would have been sufficient to extend the time at which viscosity of
the composition quadruples. (Id.) Nor has the Examiner established that the
skilled artisan would have known this amount based upon knowledge
generally known in the art at the time of the invention. (Id.) Without this
evidence, the Examiner has not sufficiently supported a conclusion of prima
facie obviousness. See Rijckaert, 9 F.3d at 1532; Fine, 837 F.2d at 1074.
Accordingly, we reverse both obviousness rejections.

CONCLUSION OF LAW
The Examiner has not established that the cited references would have
made it obvious to a person of ordinary skill in the art at the time the
invention was made to add to the prior art fuser roller coating compositions a
sufficient amount of 4,4'-(hexafluoroisopropylidene) diphenol in addition to
the bisphenol residue in the curing agent to extend the time at which
viscosity of the composition quadruples.

SUMMARY
We reverse the rejection of claims 1, 2, 6 and 7 under 35 U.S.C.
§ 103(a) as unpatentable over Eddy and Chen ‘805; and
we reverse the rejection of claims 1-5 and 7 under 35 U.S.C. §103(a)
as unpatentable over Chen ‘759, Schmiegel, and Chen ‘805.

REVERSED
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Application 11/446,894

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