Ex Parte Kadota

Board of Patent Appeals and Interferences

Aug 19, 2008

11296337 (B.P.A.I. Aug. 19, 2008)

UNITED STATES PATENT AND TRADEMARK OFFICE
____________

BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
____________

Ex parte TAKUYA KADOTA,
Appellant
____________

Appeal 2008-3821
Application 11/296,3371
Technology Center 1700
____________

Decided: August 18, 2008
____________

Before ADRIENE LEPIANE HANLON, CAROL A. SPIEGEL, and
MARK NAGUMO, Administrative Patent Judges.

NAGUMO, Administrative Patent Judge.
DECISION ON APPEAL

1 Application 11/296,337 filed 8 December 2005, titled Toner and Image
forming Apparatus Using the Same, referred to as the “337 Specification”
and cited as “Spec.”. The real party in interest is listed as Seiko Epson
Corporation. (Appeal Brief filed 15 June 2007 ("Br."), at 2.)

Appeal 2008-3821
Application 11/296,337

A. Introduction
Takuya Kadota (“Kadota”) timely appeals from the final
rejection of claims 1 and 13 under 35 U.S.C. § 102(b) in view of
Okada.2 (Br. 4.) Claims 2-12 have been withdrawn from
consideration (id.) and are not before us. We AFFIRM but enter a
NEW GROUND OF REJECTION.
B. Findings of Fact (FF)
Findings of fact throughout this Decision are supported by a
preponderance of the evidence of record. Characterizations (“CC”) of
arguments by the Examiner and by Kadota are numbered sequentially
with findings of fact but are referred to distinctly.
1. Claim 1 of the 337 Specification reads:
A toner comprising, at least,
a plurality of mother particles,
a plurality of silicas, and
a plurality of titanium oxide particles, wherein
the liberated mother particle ratio of liberated mother particles
without titanium oxide particle adhering thereto is set to be
30% or less and
the liberated titanium oxide particle ratio of liberated titanium
oxide particles adhering to none of the mother particles is set to
be 5 % or less.
(Claims App., Br. 14; paragraphing and emphasis added.)

2 Hideki Okada et al., Toner and Development Unit and Image
Forming Apparatus Using the Same, U.S. Patent 6,146,802
(14 November 2000).
2
Appeal 2008-3821
Application 11/296,337

2. Claim 13 depends from claim 1 and requires that the titanium
oxide particles be surface treated with a silane coupling agent.
3. In most conventional color toners, according to the
337 Specification, and:
[a]s shown in Fig. 2(b), actually there are mother
particles 18 and external additive particles 19 which
adhere to each other . . . liberated mother particles 18’ to
which no external additive particle 19 adheres, and
liberated external additive particles 19’ adhering no
mother particles 18 and they exist in the mixed state.
(Spec. 5:13-23.)
4. Figure 2(b) of the 337 Specification is reproduced below:

{Kadota Figure 2(b) is said to show a sketch of a toner.}3

3 The text in curly braces following the Figures is provided to ensure
compliance with section 508 of the U.S. Rehabilitation Act for
publication of this Decision on the USPTO website pursuant to the
Freedom of Information Act. It is not part of the Decision.
3
Appeal 2008-3821
Application 11/296,337

5. According to the 337 Specification, silica (SiO2) is added
conventionally as an external additive 19 to prevent the occurrence of
filming caused by liberated mother particles fusing to toner contact
members. (Spec. 4:24-26; 5:24-6:3.)
6. The 337 Specification instructs further that titanium oxide
(TiO2) is added conventionally as an external additive 19 as a charge
control agent to stabilize the charge of the toner T. (Spec. 5:1-4.)
7. An excess of liberated mother particles 18’ is said to lead to
excessive charge. (Spec. 7:15-17.)
8. Binding too much TiO2 to mother particles, however, is said to
lead to insufficient charge, leading to image defects and toner
scattering. (Spec. 7:19-23.)
9. Moreover, liberated TiO2 particles are said to adhere to toner
contact members, thereby facilitating filming. (Spec. 7:24-27.)
10. According to the 337 Specification, in one embodiment,
[t]he liberated mother particle ratio of liberated mother
particles 18’ without titanium oxide particle 19 adhering
thereto is set to be 30 % or less. The liberated mother
particle ratio is a percentage of the amount of the
liberated mother particles 18’ relative to the entire
amount of the toner. In addition, the liberated titanium
oxide particle ratio of liberated titanium oxide
particles 19 adhering to none of the mother particles 18 is
set to be 5 % or less. The liberated titanium oxide
particle ratio is a percentage of the amount of the
liberated titanium oxide particles 19 relative to the entire
amount of the toner.
(Spec. 40:7-15.)
4
Appeal 2008-3821
Application 11/296,337

11. The 337 Specification indicates that external additives may be
treated with a silanizing agent such as HDMS
(hexadimethyldisilizane) to make them hydrophobic to improve their
environmental stability, fluidity and charging properties. (E.g.,
Spec 16:21-25; 35:14-18; 40:15-19.)
12. The Examiner finds that
Okada teaches a toner comprising a mother particle and
an external additive where the amount of liberated
external additive and liberated mother particles is in the
same ranges as claimed (claims 2 and 9). Okada
specifically teaches titanium oxide as an external additive
(col. 23 line 18). Okada also teaches that two or more
additives may be used and that additional silica particles
may be surface treated with a silane coupling agent
(Col. 20 lines 17-45 and col. 23 lines 10-25).
(Ans. 3).
13. The Examiner thus concludes that Okada describes subject
matter within the scope of claims 1 and 13. (Ans. 3.)
14. The toner of appealed claim 1 comprises mother particles,
silicas, and titanium dioxide particles and requires "the liberated
mother particle ratio of liberated mother particles without titanium
oxide particles adhering thereto" to be 30% or less (Claims App.,
Br. 14).
15. Kadota argues that Okada claim 9 does not suggest how many
mother particles are attached only to silica particles, only to titanium
oxide particles, or to neither silica nor titanium oxide particles and,
therefore, cannot teach the recited liberated mother particle ratio of
5
Appeal 2008-3821
Application 11/296,337

liberated mother particles “without titanium oxide particles adhering
thereto.” (Br. 11.)
16. Kadota does not dispute the Examiner’s findings regarding
Okada claim 2.
17. Okada claim 9 depends from independent Okada claim 7.
18. Okada claim 7 reads in relevant part:
A toner comprising:
a plurality of mother particles; and
a plurality of external additive particles to be attached to
said mother particles, and
including toner particles comprising said mother particle
having attached thereto said external additive particles
and toner particles comprising said mother particle not
having attached thereto said external additive particles,
wherein an inclination . . . is not smaller than 0.4.
(Okada 52:7-20.)
19. Okada claim 9 reads:
The toner according to claim 7, wherein a percentage of
the number of said toner particles each comprising said
mother particle having attached thereto said external
additive particles and the number of the entire toner
particles is not lower than 60%.
(Okada 52:33-37.)
20. According to Okada, “[t]he sum of the count of synchronous
mother particles (synchronous toner particles) and the count of
asynchronous mother particles is defined as the entire toner particles.”
(Okada 34:24-27 and 40:20-23.)
6
Appeal 2008-3821
Application 11/296,337

21. Okada defines “synchronous” mother particles as those that are
attached to external additive particles, and “asynchronous” mother
particles as mother particles that are not attached to external additive
particles. (Okada 18:8-14 & 27-34.)
22. The terms “synchronous” and “asynchronous” arise from the
method of analysis, which measures time-resolved emission spectra of
the toner to determine whether and to what extent mother particles are
attached to external additive particles. (Okada 17:44-19:17.)
23. According to Okada, external additives “include a variety of
materials having surfaces subjected to a process of obtaining
hydrophobic characteristics[s].” (Okada 20:17-19.)
24. Okada indicates that silane coupling agents are useful
hydrophobic surface treatment agents, and that they prevent
deterioration in electrification characteristics and fluidity by
preventing the adsorption of water. (Okada 20:22-32.)
25. Okada teaches that when θ [theta], the ratio of the equivalent
particle size of the external additive to the equivalent particle size of
the mother particles, is not larger than 0.6, the external additive is not
so easily liberated, and less filming occurs. (Okada 22:7-26; cf. Spec.
paragraph bridging 30-31 (describing θ).)
26. Okada teaches further that “[t]he present invention is not
limited to the silica fine particles which are employed as the external
additives. . . . In the present invention, two or more kinds of external
additives may be used. In such cases, it is sufficient if at least one of
them satisfies the above-described relationship” (Okada 23:11-26.)
7
Appeal 2008-3821
Application 11/296,337

27. More particularly, Okada describes an embodiment in which:
θ is not larger than 0.6 and the number of the
asynchronous external additives 13 shown in Fig. 6 is not
higher than 5% with respect to the overall number of
toner particles. Since the proportion of the asynchronous
external additives 13 is determined as described above,
re-coagulation of the external additives 13 can be
prevented. Therefore, filming can be prevented.
(Okada 23:32-38.)
28. Okada teaches that “[w]hen titanium oxide is employed to serve
as the external additives [sic], the emission spectrum of Ti must be
detected and processed.” Okada 23:18-20.)
29. Thus, the synchronous/asynchronous [attached/free]
measurement is specific to the type of external additive.
30. Okada does not expressly describe toners having both silica
(SiO2) and titanium oxide (TiO2) external additives.
31. All of the examples provided by Okada appear to have only
SiO2 particles as the external additive.
32. In Example 1, Okada presents five tests in which the ratio of
asynchronous toner ranges from 36.1 to 6.8 percent by number.
(Okada 36:40-53.)
33. Summarizing the results, Okada states:
When the proportion of asynchronous toner was 20% by
number or lower, satisfactory results were obtained such
that fixation of toner was completely prevented and no
unevenness in the density of images occurred. When the
proportion of the asynchronous toner was 30% by
number or lower, relatively satisfactory results were
8
Appeal 2008-3821
Application 11/296,337

obtained. It is preferable that the proportion is 20% by
number or lower.
(Okada 37:10-16.)
34. According to Okada, the method is disclosed in "New Method
of Analyzing Additive, Analysis of Toner by Particle Analyzer",
Suzuki and Takahara, collection of "Japan Hardcopy '97", (95-th)
annual meeting of Electrophotography Association, Jul. 9 to 11, 1997.
(Okada 17:52-58.)
35. Kadota reports using the same method of analysis disclosed in
the same article cited by Okada. (Spec. 27-31.)
36. Kadota argues the term “number of the entire toner particles”,
as recited in Okada claim 9, means the total number of all particles
(mother particles attached to external additive particles + mother
particles not attached to external additive particles + unattached
external additive particles) and presents calculations of percents based
on a “hypothetical toner.” (Br. 8-11.)
37. Kadota does not present any evidence from the Okada
specification in support of its interpretation of the term “number of
entire toner particles.”
38. Nonetheless, Kadota concludes that appealed claim 1 is not
anticipated and would not have been obvious over Okada. (Br. 11.)
39. Kadota also argues that the Examiner’s rejection is legally
flawed because disclosure of a broader, encompassing range is not
necessarily a disclosure of a narrower claimed range, citing Atofina v.
Great Lakes Chemical Corp., 441 F.3d 991, 1000 (Fed. Cir. 2006).
9
Appeal 2008-3821
Application 11/296,337

40. The assignee of Okada is listed as Seiko Epson Corporation.
41. Kadota does not challenge the status of Okada as prior art
against the appealed claims.
C. Discussion
On appeal, the procedural burden is on the Appellant to come
forward with facts or arguments demonstrating reversible error in the
Examiner’s rejection. See Gechter v. Davidson, 116 F.3d 1454, 1460
(Fed. Cir. 1997) ("[W]e expect that the Board's anticipation analysis
be conducted on a limitation by limitation basis, with specific fact
findings for each contested limitation and satisfactory explanations for
such findings.") (emphasis added).
Section 102(b) reads in relevant part, “A person shall be
entitled to a patent unless— . . .(b) the invention was patented or
described in a printed publication . . . more than one year prior to the
date of the application for patent in the United States.”
35 U.S.C. § 102(b) (2002). “Anticipation requires a showing that
each limitation of a claim is found in a single reference, either
expressly or inherently.” Atofina, 441 F.3d at 999 (citation omitted.)
In other words, description in the prior art of a single embodiment
within the scope of a claim suffices to anticipate. However, as the
Federal Circuit explained in Atofina, “the disclosure of a range is no
more a disclosure of the end points of the range than it is of each of
the intermediate points.” Id. at 1000.
10
Appeal 2008-3821
Application 11/296,337

Although cases can be found supporting the proposition that
description of a small genus can be a description of the individual
species that make up that genus (e.g., In re Schaumann, 572 F.2d 312,
316-17 (CCPA 1978)), even when the genus has several hundred
species (e.g., In re Petering, 301 F.2d 676, 681 (CCPA 1962)4, the
facts of those cases provided something more than the mere disclosure
of the genus. In the context of the written description requirement,
this “something more” has been described as a “blazemark.” In re
Ruschig, 379 F.2d 990, 995 (CCPA 1967) (“We are looking for blaze
marks which single out particular trees. We see none.”) The same
considerations, highlighted by the presence of the word “described” in
section 102(b) apply in the context of anticipation.
Here, the Examiner relies on claims 2 and 9 of Okada to reject
claims 1 and 13 of the 337 application. The Examiner, however, has
not referred to the Okada specification to explain what the Okada
claims might mean when read in light of that specification. Nor has
the Examiner directed our attention to any teachings in the
specification indicating a preference for toners wherein the liberated
mother particles (which we understand the Examiner and Kadota

4 In Petering, the court explained: “We think the Karrer patent, as a
printed publication, describes to one skilled in this art not only the
broad class but also this much more limited class within that broad
class, and we think it is immaterial that Karrer did not expressly spell
out the limited class as we have done here. It is our opinion that one
skilled in this art would, on reading the Karrer patent, at once
envisage each member of this limited class, even though this skilled
person might not at once define in his mind the formal boundaries of
the class as we have done here.”
11
Appeal 2008-3821
Application 11/296,337

agree are those that do not have adhered titanium oxide) are 30% or
less, as recited by appealed claim 1. Indeed, all of the examples in
Okada have only silica as the external additive particle.
On the record established by the Examiner, as pointed out by
Kadota, the Examiner failed to establish a prima facie case of
anticipation. We therefore REVERSE the rejection under § 102(b).
We have considered Kadota’s other arguments, which make up
the bulk of its brief, but find them to be without merit. First, Kadota
has not supported its interpretation of the term “entire toner particles”
as being each and every particle present in the toner by reference to
evidence of record. Moreover, this interpretation is not immediately
plausible because toners, as the name suggests, are usually colored so
an image can be formed on a substrate. Thus, calling a minute
colorless silica particle a “toner particle” is incongruous. Although
the “plain language” of the claim could be read as urged by Kadota,
the plain language does not demand to be read in that way. Our own
review of the Okada disclosure indicates that the only definition of the
term “entire toner particle,” which is presented twice in the Okada
specification, refers only to “synchronous” and “asynchronous”
mother particles, which are synonymous with mother particles with
attached external particles and with mother particles without any
attached external particles, respectively. (FF 20-22.) Thus, the
preponderance of the evidence supports the interpretation of the term
“entire toner particles” as being the sum of the attached and
unattached mother particles. Accordingly, we accord no weight to
any of Kadota’s arguments based on its “all particles” reading.
12
Appeal 2008-3821
Application 11/296,337

Similarly, Kadota’s argument that Okada fails to teach ratios of
liberated mother particles “without titanium oxide particles adhering
thereto” because Okada does not suggest how many mother particles
are attached to what kind of external additive particles fails because it
is unsupported by any credible evidence or explanation. The record
indicates that a very large number of external additive particles are
added to a very large number of mother particles and mixed
vigorously using a high-speed fluidization mixing machine.
(Okada 20:48; identical language at Spec. 34:13-14.) Under such
conditions, it would have been expected that two species of external
additive, both preferably made hydrophobic by silanization, would
have been distributed randomly on the mother particles, weighted by
any preferential attachment of one additive relative to the other. We
also note that Kadota does not appear to provide any breakdown of the
ratios of liberated mother particles in the toners it describes in Tables
2 and 7 (TiO2/SiO2) and in Table 3 (Al2O3/SiO2) of its own
specification. Thus, we find this argument unpersuasive of reversible
error.
Finally, Kadota “submits that claim 1 is not anticipated (and
would not have been obvious over) Okada.” (Br. 11; FF 38.) While
we agree that a prima facie case of anticipation has not been
established, the issue of obviousness has not been put before us by the
Examiner. We note, however, that obviousness frequently arises in
cases where the prior art discloses an overlapping or encompassing
range. See, e.g., In re Harris, 409 F.3d 1339, 1341 (Fed. Cir. 2005)
(“a prima facie case of obviousness arises when the ranges of a
13
Appeal 2008-3821
Application 11/296,337

claimed composition overlap the ranges disclosed in the prior art.”)
(citations omitted); In re Peterson, 315 F.3d 1325, 1329–30 (Fed. Cir.
2003) ("Selecting a narrow range from within a somewhat broader
range disclosed in a prior art reference is no less obvious than
identifying a range that simply overlaps a disclosed range.")
A review of Okada, which, being commonly assigned with
Kadota’s 337 application to Seiko Epson Corp., we assume is familiar
to Kadota, provides ample reason to conclude that Okada renders the
subject matter on appeal at least obvious. First, Okada teaches that
two or more external additives may be used, mentioning titanium
oxide specifically. (Okada 23:18-20: FF 26.) Second, Okada teaches
that when the ratio of asynchronous toner is less than 30% by number,
images are satisfactory, and when that ratio is 20% by number or less,
“fixation of toner was completely prevented and no uneveness in the
density of images occurred.” (Okada 37:10-12; FF 32.) Okada also
teaches that re-coagulation of external additives and filming can be
prevented when the number of asynchronous particles (i.e., external
particles not attached to mother particles) is not higher than 5% with
respect to the overall number of toner particles. (Okada 23:18-20;
FF 27.) Finally, Okada teaches that external additives are
advantageously surface treated with silane coupling agents.
(Okada 20:17-32; FF 23-24.) Thus, the various limitations of claims 1
and 13 are within the general scope of the teachings of Okada.
Okada does not expressly teach the combination of silica and
titanium oxide required by the claims. The predecessor to our
reviewing court explained that “rejections under 35 U.S.C. § 102 are
14
Appeal 2008-3821
Application 11/296,337

proper only when the claimed subject matter is identically disclosed or
described in the prior art.” In re Arkley, 455 F.2d 586, 587
(CCPA 1972). A proper anticipatory reference, the court continued,
“must clearly and unequivocally disclose the claimed compound or
direct those skilled in the art to the compound without any need for
picking, choosing, and combining various disclosures not directly
related to each other by the teachings of the cited reference.” Id. We
lack the Examiner’s familiarity with the art, and the record has not
been developed by a sufficiently detailed exchange of views between
the Examiner and Kadota to enable us to determine whether the
disclosures in Okada are sufficient to direct those skilled in the art to
the claimed subject matter without any need for picking, choosing,
and combining the various disclosures in Okada. But the record does
persuade us that the presently claimed subject matter is “a
combination of familiar elements according to known methods [that]
is likely to be obvious when it does no more than yield predictable
results.” Leapfrog Enter., Inc. v. Fisher-Price, Inc., 485 F.3d 1157,
1161 (Fed. Cir. 2007) (quoting KSR Int’l Co. v. Teleflex, Inc., 127 S.
Ct. 1727, 1739 (2007)).
We have not overlooked the presence of some results reported
in the Examples and Tables of the 337 Specification. However, it is
far from clear whether those results are commensurate in scope with
the exclusionary coverage sought; nor is it clear that they compare
adequately to Okada.
Because the issue of obviousness in view of Okada has not been
raised by the Examiner, we enter this rejection as a NEW GROUND.
15
Appeal 2008-3821
Application 11/296,337

Moreover, we leave it to the Examiner and Kadota to consider, in the
first instance, whether the record contains sufficient objective indicia
of nonobviousness to rebut a prima facie case of obviousness of
claims 1 and 13.
D. Summary
In view of the record and the foregoing considerations, it is:
ORDERED that the rejection of claims 1 and 13 under
35 U.S.C. § 102(b) in view of Okada is REVERSED;
FURTHER ORDERED that claims 1 and 13 are rejected
under 35 U.S.C. § 103(a) in view of Okada;
APPELLANTS’ OPTIONS FOR
RESPONDING TOTHE NEW GROUND OF REJECTION
Regarding the new ground of rejection pursuant to 37 C.F.R.
§ 41.50(b), that paragraph explains that "[a] new ground of rejection
pursuant to this paragraph shall not be considered final for judicial
review." Appellants, within two months from the date of this
decision, must exercise one of the following two options with respect
to the new ground of rejection to avoid termination of the appeal as to
the rejected claims:
(1) Reopen prosecution. Submit an appropriate
amendment of the claims so rejected or new evidence
relating to the claims so rejected, or both, and have the
matter reconsidered by the Examiner, in which event the
proceeding will be remanded to the Examiner. . . .
(2) Request rehearing. Request that the
proceeding be reheard under § 41.52 by the Board upon
the same record. . . .
16
Appeal 2008-3821
Application 11/296,337

37 C.F.R. § 41.50(b) (2007).
No time period for taking any subsequent action in connection
with this appeal may be extended under 37 C.F.R. § 1.136(a). See 37
C.F.R. § 41.50(f).
AFFIRMED: 37 C.F.R. § 41.50(b)

rvb

SUGHRUE MION, PLLC
2100 Pennsylvania Avenue, N.W.
Suite 800
Washington, DC 20037
17