Ex Parte Kakimoto et al

Patent Trial and Appeal Board

Sep 22, 2016

13046134 (P.T.A.B. Sep. 22, 2016)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE FIRST NAMED INVENTOR
13/046,134 03/11/2011 Masayuki KAKIMOTO
22850 7590 09/26/2016
OBLON, MCCLELLAND, MAIER & NEUSTADT, LLP,
1940 DUKE STREET
ALEXANDRIA, VA 22314
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
ATTORNEY DOCKET NO. CONFIRMATION NO.
377174US99 4269
EXAMINER
JELSMA, JONATHAN G
ART UNIT PAPER NUMBER
1721
NOTIFICATION DATE DELIVERY MODE
09/26/2016 ELECTRONIC
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.
Notice of the Office communication was sent electronically on above-indicated "Notification Date" to the
following e-mail address( es):
patentdocket@oblon.com
oblonpat@oblon.com
ahudgens@oblon.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte MASA YUKI KAKIMOTO, AKIO MATSUI,
YOSHIKATSU MATSUDA, and MASANORI RIMOTO
Appeal2014-008595
Application 13/046, 134
Technology Center 1700
Before PETER F. KRATZ, BEYERL YA. FRANKLIN, and
JENNIFER R. GUPTA, Administrative Patent Judges.
GUPTA, Administrative Patent Judge.
DECISION ON APPEAL
Appellants 1 appeal under 35 U.S.C. § 134(a) from the Examiner's
decision2 finally rejecting claims 1-13. An oral hearing was held on
September 15, 2016. 3 We have jurisdiction under 35 U.S.C. § 6(b). We
affirm.
1 Appellants identify the real party in interest as Ricoh Company, Ltd.
Appeal Brief filed March 11, 2014 ("Br."), 1.
2 Final Office Action mailed August 14, 2013 ("Final Act.").
3 The record will include a transcript of the oral hearing when it becomes
available.
Appeal2014-008595
Application 13/046, 134
The subject matter on appeal relates to a toner, a method of
manufacturing a toner, and image forming method using a toner. Spec. 1,
lines 8-9. Claim 1, reproduced below, is illustrative of the claims on appeal.
1. A toner comprising:
a mother toner particle comprising a binder resin, a releasing
agent, and a coloring agent; and
an external additive comprising an inorganic particulate,
which is mixed with the mother toner particle in a mixing process
by a mixer,
wherein, when 4 grams of the toner is subjected to ultrasonic
vibration for one minute at an output power of 20 W at 20 kHz
in 100 ml of an aqueous solution comprising a polyoxyethylene
lauryl ether compound as a surface active agent, the external
additive is collected in an amount of from 0.1 ppm to 10 ppm as
measured by atomic absorption spectrometry.
App. Br. (Claims Appendix) 6.
REJECTIONS ON APPEAL
1. Claims 1-8 and 11-13 stand rejected under 35 U.S.C. § 102(b) as
anticipated by or, in the alternative, under 35 U.S.C. § 103(a) as
obvious over Ohishi (US 6,042,979, issued Mar. 28, 2000)
(hereinafter "Ohishi"); and
2. Claims 9 and 10 stand rejected under 35 U.S.C. § 103(a) as
unpatentable over Ohishi in view of Nakayama (US 2006/0204883
Al, published Sept. 14, 2006) (hereinafter "Nakayama").
DISCUSSION
Appellants argue the claims as a group with respect to the first stated
rejection and do not separately contest the separate rejection of certain
dependent claims. We select claim 1 as representative of the rejected
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Application 13/046, 134
claims, and the remaining claims on appeal will stand or fall with claim 1.
(See 37 C.F.R. § 41.37 (c)(l)(iv) (2015)).
After consideration of the evidence on this record and each of
Appellants' contentions, we find that the preponderance of evidence
supports the Examiner's conclusions that the subject matter of Appellants'
claims is unpatentable over the applied prior art. Accordingly, we sustain
the Examiner's rejections for substantially the findings and reasons set forth
by the Examiner in the Final Office Action and Answer. See generally Final
Act. 2-8 and Examiner's Answer mailed May 22, 2014 ("Ans.), 2-10. We
offer the following for emphasis only.
The Examiner finds, and Appellants do not dispute that, Ohishi
teaches a toner that includes toner particles composed of a binding resin, a
colorant, and one or more external additives such as titanium oxide (Ohishi
5:53-56; 6:2-10), and may further include a releasing agent such as a wax
(id. at 8:50-60). Final Act. 3. The Examiner finds that the method for
preparing Ohishi' s toner includes mixing the toner particles with the external
additives in a two-step operation-a premixing step using a weaker energy
and a final mixing operation using a stronger energy (Ohishi 6:25-28). Final
Act. 3. The Examiner acknowledges that Ohishi does not explicitly teach
the toner characteristic measured when external additive is isolated from the
mother toner particle by ultrasonic vibration and collected in an amount of
0.1 ppm to 10 ppm, but finds that Ohishi's two-step mixing operation for
preparing its toner is similar to process of preparing a toner as described in
Appellants' Specification (Spec. 77, 11. 8-21). Final Act. 4. Thus, the
Examiner determines that Ohishi's toner, when subjected to the same
ultrasonic treatment as recited in claim 1, will necessarily or inherently have
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Appeal2014-008595
Application 13/046, 134
an amount of collected external additive of from 0.1 ppm to 10 ppm. See
Ans. 9.
Appellants argue that Ohishi's toner has a strong attachment between
the mother toner particle and the external additive such that the amount of
collected external additive would be less than 0.1 ppm when subjected to the
ultrasonic treatment specified in claim 1. Br. 4. Appellants' argument is not
persuasive of reversible error in the Examiner's rejections. In relying upon
the theory of inherency, the Examiner must provide a basis in fact and/or
technical reasoning to reasonably support the determination that the
allegedly inherent characteristic necessarily flows from the teachings of the
applied prior art. Ex parte Levy, 17 USPQ2d 1461, 1464 (BPAI 1990).
Given the similarities in materials and mixing conditions for preparing the
prior art and Appellants' toners, the Examiner's belief on this record that the
amount of external additive isolated from Ohishi's toner, when the toner is
subjected to the ultrasonic vibration treatment recited in claim 1, would be
within the claimed range is reasonable. See Final Act. 4. "[W]hen the PTO
shows sound basis for believing that the products of the applicant and the
prior art are the same, the applicant has the burden of showing that they are
not." See In re Spada, 911 F.2d 705, 708 (Fed. Cir. 1990) (citations
omitted); see also In re King, 801 F.2d 1324, 1327 (Fed. Cir. 1986) (finding
it insufficient for an appellant to merely assert that the prior art does not
inherently possess the characteristic relied on and challenge the PTO to
prove the contrary by experiment or otherwise. "The PTO is not equipped to
perform such tasks"). On this record, Appellants have not provided
sufficient evidence to support their contention that "[ t ]he toner described by
Ohishi has a strong attachment between the mother toner particle and the
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Application 13/046, 134
external additive such that the amount of collected external additive would
be less than 0.1 ppm when the toner described by Ohishi is subjected to the
ultrasonic treatment specified in claim 1" (Br. 4 ). Nor have Appellants
provided sufficient evidence to support their contention that the shape index
of the claimed toner is 140 or more, and thus would result in different
amounts of external additive being collected when the claimed toner and
Ohishi's toner, having a shape index of less than 125, are subjected to the
ultrasonic vibration treatment recited in claim 1 (Br. 4).
DECISION
For the above reasons, the rejections of claims 1-13 are 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).
AFFIRMED
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