Ex Parte Kondoh

Board of Patent Appeals and Interferences

Apr 26, 2011

10991361 (B.P.A.I. Apr. 26, 2011)

UNITED STATES PATENT AND TRADEMARK OFFICE
____________

BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
____________

Ex parte TSUNEAKI KONDOH
____________

Appeal 2010-005299
Application 10/991,361
Technology Center 1700
____________

Before CHUNG K. PAK, ROMULO H. DELMENDO, and
KAREN M. HASTINGS, Administrative Patent Judges.

PAK, Administrative Patent Judge.

DECISION ON APPEAL
Appellant appeals under 35 U.S.C. § 134(a) from the Examiner’s refusal to
allow claims 11 and 13 through 21, all of the claims pending in the above-
identified application. An oral hearing was held on April 12, 2011. We have
jurisdiction under 35 U.S.C. § 6.
STATEMENT OF THE CASE
The subject matter on appeal is directed to “a fixing member such as a roller,
a sheet, an endless belt, or the like, which is used for an image forming
apparatuses” (Spec. 1:6-9). This fixing member is said to overcome a problem of
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generating a crack on a heat-resistance synthetic rubber constituting an elastic layer
resulting from oxidation and deterioration during the formation of a film of
fluorocarbon resin constituting a releasing layer via burning (melting the
fluorocarbon resin) (Spec. 6:23 to 7:4 and 8:7 to 9:2). The crack on the heat-
resistance rubber constituting the elastic layer is said to cause “defects, such as a
stained image, an unevenness of an image, an unevenness of glossiness, an image
fixing defect, winding of a transfer paper, and so on” (Spec. 7: 5-14 and 8: 8-11).
To avoid such defects, the fluorocarbon resin is selected so that its melting point
“does not exceed the starting temperature for the oxidation of the heat-resistance
rubber constituting the elastic layer” (Spec. 8:18 to 9:2).
Details of the appealed subject matter are recited in representative claims 11
and 201 reproduced from the Claims Appendix to the Appeal Brief (“App. Br.”)
filed July 27, 2006 as shown below:
11. A method for producing a fixing member, comprising:

forming a first primer layer by applying a first primer on a substrate;

forming an elastic layer by applying a dispersion of a heat-resistant synthetic
rubber on said first primer layer;

forming a second primer layer by applying a second primer on said elastic
layer;

1 Appellant has presented substantive arguments directed to claims 11 and 20 in
compliance with the requirements of 37 C.F.R. § 41.37(c)(1)(vii) (App. Br. 4-9,
the Reply Brief (“Reply Br.”) filed November 14, 2006, 1-2 and the Supplemental
Reply Brief (“Supp. Reply Br.”) filed September 10, 2007, 1-2). However,
Appellant has not presented any substantive arguments directed to the other claims
on appeal (App. Br. 4-9, Reply Br. 1-2, and Supp. Reply Br. 1-2). Therefore, for
purposes of this appeal, we select claims 11 and 20 to decide the propriety of the
Examiner’s § 103(a) and obviousness-type double patenting rejections set forth in
the Answer (“Ans.”) dated July 24, 2007.

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forming a layer of fluorocarbon resin by applying a dispersion liquid or a
powdered paint of fluorocarbon resin having a melting point, which is at least 20°C
lower than a temperature for starting an oxidation of the heat-resistant synthetic
rubber constituting said elastic layer on said second primer layer; and

heating said layer of fluorocarbon resin at a temperature, which is higher
than the melting point of said fluorocarbon resin, and which does not exceed the
starting temperature for the oxidation of the heat-resistant synthetic rubber
wherein, a melt flow rate (MFR) of the fluorocarbon resin being not less than 3
grams per 10 minutes.

20. An image forming apparatus comprising a fixing member produced by a
method as claimed in claim 11.

As evidence of unpatentability of the claimed subject matter, the Examiner
relies on the following prior art references at pages 2 and 6 of the Answer:
Takahashi US 4,810,564 Mar. 7, 1989
Badesha US 5,366,772 Nov. 22, 1994
Yamamoto US 5,741,861 Apr. 21, 1998
Chen US 5,853,892 Dec. 29, 1998

Application 11/082,896 filed March 18, 2005 (now US Patent 7,146,126 B2 issued
to Yoshii et al (Yoshii) on Dec. 5, 2006).

Appellant requests review of the following grounds of rejection set forth at
pages 3 through 10 of the Answer2:
1) Claims 11, 13 through 16, and 18 through 21 under 35 U.S.C. §103(a)
as unpatentable over the combined disclosures of Takahashi and Badesha;

2 The Examiner has withdrawn the provisional obviousness-type double patenting
rejection of claims 11, 13 through 19 and 21as unpatentable over the claims of
copending Application 10/784,160 set forth in the final Office action dated January
30, 2006. (See Ans. 6.)
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2) Claims 11, 13 through 16, and 18 through 21 under 35 U.S.C. §103(a)
as unpatentable over the combined disclosures of Takahashi, Badesha, and
Yamamoto;
3) Claim 17 under 35 U.S.C. §103(a) as unpatentable over the combined
disclosures of Takahashi, Badesha, and Chen;
4) Claim 17 under 35 U.S.C. §103(a) as unpatentable over the combined
disclosures of Takahashi, Badesha, Yamamoto, and Chen; and
5) Claim 20 under the judicially-created doctrine of obviousness-type
double patenting as unpatentable over claim 11 of Application 11/082,896 (now
U.S. Patent 7,146126 issued to Yoshii et al (Yoshii)). (See App. Br. 3-4.)
RELEVANT FACTUAL FINDINGS, PRINCIPLES OF LAW, ISSUES,
ANALYSES, AND CONCLUSIONS
I. REJECTIONS (1) AND (2)
Appellant does not question the Examiner’s finding that Takahashi teaches a
method of producing a fixing member for an image forming apparatus, comprising
applying a first primer on a metal core of roll form made of aluminum, stainless
steel or iron to form a first primer layer, applying a highly heat-resistant
organopolysiloxane composition containing about 100 parts by weight of
organopolysiloxane, about 5 to 100 parts by weight of heat resistance imparting
iron oxide, and a dispersant to form an elastic silicon rubber layer on the first
primer layer, applying a commercially available fluorocarbon resin in the form of
powder or dispersion to form a fluorocarbon resin layer on the elastic silicon
rubber layer and heating the fluorocarbon resin layer at a temperature of 300 to
400oC for a period of 30 minutes to 2 hours to melt and adhere (fuse) the
fluorocarbon resin layer on the elastic silicon rubber layer. (Compare Ans. 2-3
with App. Br. 4-7, Reply Br. 1-2, and Supp. Reply Br. 1-2.) Nor does Appellant
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question the Examiner’s determination that it would have been obvious to apply an
additional primer layer between the elastic silicon rubber layer and the
fluorocarbon layer of the fixing member taught by Takahashi per Badesha’s
suggestion, with a reasonable expectation of successfully improving mechanical
and structural integrity of the fused layers. (Compare Ans. 4 with App. Br. 4-7,
Reply Br. 1-2, and Supp. Reply Br. 1-2.) Rather, Appellant contends that the prior
art references relied upon would not have led one of ordinary skill in the art to
apply a fluorocarbon resin having a melt flow rate of not less than 3 grams per 10
minutes and a melting point of at least 20oC less than the temperature at which the
heat resistant silicon rubber layer oxidizes and deteriorates and heating the same at
a fusing temperature higher than the melting point of the fluorocarbon resin, but
lower than the temperature at which the heat resistant silicon rubber layer oxidizes
and deteriorates. (See App. Br. 4-5 and 7.)
Thus, the dispositive question is: Did the Examiner err in finding that the
prior art references relied upon would have led one of ordinary skill in the art to
apply a fluorocarbon resin having a melt flow rate of not less than 3 grams per 10
minutes and a melting point of at least 20oC less than the temperature at which the
heat resistant silicon rubber layer oxidizes and deteriorates and heat the same at a
temperature higher than the melting point of the fluorocarbon resin, but lower than
the temperature at which the heat resistant silicon rubber layer oxidizes and
deteriorates in Takahashi’s fixing member making process within the meaning of
35 U.S.C. §103? On this record, we answer this question in the negative.
As correctly found by the Examiner at page 4 of the Answer, Takahashi, like
Appellant, is directed to preventing the thermal deterioration of the elastic silicon
rubber layer resulting from heating the fluorocarbon resin layer applied on the
elastic silicon rubber layer at a temperature of 300 to 400oC to melt and adhere the
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fluorocarbon resin layer on the elastic silicon rubber layer. (Compare Takahashi,
col. 1, ll. 41-56 and col. 2, ll. 28-33 with Spec. 6:23 to 7:14 and 8: 7 to 9:2.)
Takahashi broadly teaches using a commercially available fluorocarbon resin, such
as PTFE or FEP, with at least one example directed to heating a commercially
available fluorocarbon resin material having a melting point of 327oC, i.e., Teflon
6C-J available from Mitsui Co., on a particular silicon rubber layer at a
temperature of 350oC which is below the temperature at which the thermal
deterioration (oxidation) of the elastic silicon rubber layer occurs, but is greater
than the melting point of the commercially available fluorocarbon resin material.
(col. 4, ll. 12-32 and col. 5, l. 55 to col. 6, l. 68, Ex. 1.) Implicit in this teaching is
that the thermal deterioration (oxidation) temperature of the particular silicon
rubber layer taught by Takahashi is at least 23oC greater than the melting point of
the exemplified commercially available fluorocarbon resin material since it is
higher than the heat treatment temperature of 350oC which is 23oC greater than the
melting point of the exemplified commercially available fluorocarbon resin
material.
Appellant also does not dispute the Examiner’s finding that the
commercially available fluorocarbon resin materials taught by Takahashi “include
those described in Appellant’s Specification (See page 6, lines 25 and page 14, line
2) such as PTFE with [a] melting point of 327oC and FEP with [a] melting point of
275oC and a melt flow rate (MFR) of not less than 3 grams per 10 minutes.”
(Compare Ans. 3 with App. Br. 4-7, Reply Br. 1-2, and Supp. Reply Br. 1-2.) The
use of such commercially available fluorocarbon resin materials, those with the
above melting points also having the claimed melt flow rates, can also be implied
from Takahashi’s disclosure of the heat treatment temperature of 300 to 400oC for
melt-adhering the fluorocarbon resin layer (indicating the melting point of the
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fluorocarbon resin can be lower than 300oC or 400oC) , with one example of a
commercially available fluorocarbon resin material having a melting point of
327oC as discussed supra. Takahashi’s teaching directed to using such
commercially available fluorocarbon resin material with an elastic silicon rubber
layer having little or no thermal deterioration at a temperature as high as 400oC in
which the fluorocarbon resin material is melt-adhered to the elastic silicon rubber
layer implies that the thermal deterioration temperature of the elastic silicon rubber
layer can be higher than 400oC which is at least 20oC higher than the melting point
of the commercially available fluorocarbon resin material.
Given the above specific teachings and implications, we concur with the
Examiner that one of ordinary skill in the art would have been led to apply a
commercially available fluorocarbon resin having a melt flow rate of not less than
3 grams per 10 minutes and a melting point of at least 20oC less than the
temperature at which the heat resistant silicon rubber layer oxidizes and thermally
deteriorates and to heat the same at a temperature higher than the melting point of
the commercially available fluorocarbon resin, but lower than the temperature at
which the heat resistant silicon rubber layer oxidizes and deteriorates in
Takahashi’s fixing member making process.3 See KSR Int’l. Co. v. Teleflex Inc.,
550 U.S. 398, 418 (2007) (“[A]nalysis [of whether the subject matter of a claim
would have been obvious under § 103] need not seek out precise teachings directed
to the specific subject matter of the challenged claim, for a court can take account
of the inferences and creative steps that a person of ordinary skill in the art would

3 Having determined that Takahashi and Badesha would have provided sufficient
teachings to render the claimed subject matter prima facie obvious within the
meaning of 35 U.S.C. § 103, we need not discuss the content of Yamamoto, an
additional reference, referred to in the second rejection of the same claims rejected
in the first rejection as it is, at best, cumulative.
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employ.” (emphasis added)); In re Preda, 401 F.2d 825, 826-27 (CCPA 1968)
(“[I]n considering the disclosure of a reference, it is proper to take into account not
only specific teachings of the reference but also the inferences which one skilled in
the art would reasonably be expected to draw therefrom.” )
In reaching this determination, we have considered Appellant’s reliance on
allowance of claims of a related application at pages 6 and 7 of the Appeal Brief
and page 2 of the Reply Brief. However, it is well settled that each application is
decided on its own merits. In re Giolito, 530 F.2d 397, 400 (CCPA 1976) (“We
reject appellants’ argument that the instant claims are allowable because similar
claims have been allowed in a patent. It is immaterial whether similar claims have
been allowed to others”).
Further, Appellant’s belated reliance on unexpected results in the Reply
Brief not warranted by any new argument in the Answer need not be considered
since they were not relied upon in the Appeal Brief. Cf. Cross Med. Prods. Inc. v.
Medtronic Sofamor Danek, Inc., 424 F.3d 1293, 1320-21 n.3 (Fed. Cir. 2005) (It is
well established that arguments not raised in the opening Brief are deemed
waived.). Ex parte Borden, 93 USPQ2d 1473, 1474 (BPAI 2010) (Informative)
(“the reply brief [is not] an opportunity to make arguments that could have been
made in the principal brief on appeal to rebut the Examiner’s rejections, but were
not.”). To the extent that we need to consider the data referred to by the Examiner
in support of lack of enablement in the Office Action dated August 30, 2004 in
connection with a related application as unexpected results as asserted by
Appellant at page 1 of the Reply Brief, we are not convinced that Appellant has
carried the burden of showing unexpected results. Appellant has not shown that
such an unsworn exhibit is factual evidence, not an argument. In re Mehta, 347
F.2d 859, 866 (CCPA 1965) (Unsworn exhibits are treated as arguments). Thus,
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Appellant has not shown that the exhibit relied upon is sufficient to establish
unexpected results. See, e.g., In re De Blauwe, 736 F.2d 699, 705 (Fed. Cir. 1984)
(Appellant’s mere arguments in the Brief cannot take the place of factual
evidence.) Even were we to treat it as a factual showing, Appellant has not
explained why such a showing would be unexpected by one of ordinary skill in the
art in view of the teachings of Takahashi, In re Geisler, 116 F.3d 1465, 1470 (Fed.
Cir. 1997), is based on a comparison between the claimed subject matter and the
closest prior art (Example 1 of Takahashi), In re Baxter Travenol Labs., 952 F.2d
388, 392 (Fed. Cir. 1991), and is commensurate in scope with the claims on appeal,
In re Grasselli, 713 F.2d 731,743 (Fed. Cir. 1983). Appellant’s failure to explain
is further accentuated in view of the Examiner’s finding at page 8 of the Answer
which indicates that the alleged unexpected properties (crack resistance, film
formation and image defect) “depend also on one more [unclaimed] variable,
namely the content of iron oxide,” which is included in Takahashi’s exemplified
fixing member discussed above. It is not within the province of this Board to
independently assess the probative value of the data relied upon by Appellant and
interpret it in a light most favorable to Appellant. It is well settled that the burden
of demonstrating unexpected results is on the party asserting them. In re Klosak,
455 F.2d 1077, 1080 (CCPA 1972).
Accordingly, based on the totality of record, including due consideration of
Appellant’s arguments and exhibit, we determine that the preponderance of
evidence weighs most heavily in favor of obviousness of the subject matter recited
in claims 11, 13 through 16, and 18 through 21 within the meaning of 35 U.S.C.
§103.
II. REJECTIONS (3) AND (4)
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Appellant does not dispute the Examiner’s determination that it would have
been obvious to employ the polyamide substrate taught by Chen, in lieu of the
aluminum or stainless steel substrate taught by Takahashi, in forming the fixing
member suggested by Takahashi and Badesha as required by claim 17 (Compare
Ans. 5-6 with App. Br. 8.) Rather, Appellant relies on the same arguments
advanced in connection with the rejections of claims 11, 13 through 16, and 18
through 21 discussed supra. (See App. Br. 8.) Thus, for the same reasons detailed
above, we determine that the preponderance of evidence weighs most heavily in
favor of obviousness of the subject matter recited in claim 17 within the meaning
of 35 U.S.C. §103.
III. REJECTION (5)
We reverse the Examiner’s obviousness-type double patenting rejection of
claim 20 based on the claims of U.S. Patent 7,146126 issued to Yoshii et al
(Yoshii) for the reasons set forth by Appellant. (See, e.g., Supp. Reply Br. 2.) As
indicated by Appellant, the Examiner has not explained at pages 6 and 7 of the
Answer why the claims of U.S. Patent 7,146,126 drawn to a fixing member having
a base layer and an outermost layer having two fluororesins having two different
melt flow rates would have rendered a fixing member having two primer layers, an
elastic rubber layer, and a fluorocarbon resin layer having a melting point of at
least 20oC lower than the oxidation (thermal deterioration) temperature of the
elastic rubber layer, as recited in claim 20 of the present application, obvious to
one of ordinary skill in the art. See Studiengesellschaft Kohle mbH v. N.
Petrochemical Co., 784 F.2d 351, 355 (Fed. Cir. 1986) (refusing to consider the
issue of obviousness-type double patenting where the patent challenger “offered no
evidence of the scope and content of the pertinent art, . . . the level of skill in the
art, or what would have been obvious to a person skilled in the art”). Nor has the
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Examiner proffered a sufficient basis to show that the holding of In re Schneller,
397 F.2d 350, 355-56 (CCPA 1968) relied upon is applicable to the present
situation. (See Ans. 7.) Unlike Schneller, the Examiner has not shown that the
grant of a patent covering the subject matter recited in claim 20 of the present
application will improperly or unjustifiably result in a timewise extension of the
protection of the best mode of the invention contemplated and disclosed by
Appellant and afforded by Appellant’s earlier patent (i.e., U.S. Patent 7,146,126).
Id.

ORDER
In view of the foregoing, it is
ORDERED that the decision of the Examiner to reject claims 11, 13 through
16, and 18 through 21 under 35 U.S.C. §103(a) as unpatentable over the combined
disclosures of Takahashi and Badesha is AFFIRMED;
FURTHER ORDERED that the decision of the Examiner to reject claims11,
13 through 16, and 18 through 21 under 35 U.S.C. §103(a) as unpatentable over
the combined disclosures of Takahashi, Badesha, and Yamamoto is AFFIRMED;
FURTHER ORDERED that the decision of the Examiner to reject claim 17
under 35 U.S.C. §103(a) as unpatentable over the combined disclosures of
Takahashi, Badesha, and Chen is AFFIRMED;
FURTHER ORDERED that the decision of the Examiner to reject claim 17
under 35 U.S.C. §103(a) as unpatentable over the combined disclosures of
Takahashi, Badesha, Yamamoto, and Chen is AFFIRMED;
FURTHER ORDERED that the decision of the Examiner to reject claim 20
under the judicially-crated doctrine of obviousness-type double patenting as
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unpatentable over claim 11 of Application 11/082,896 (now U.S. Patent 7,146126)
is REVERSED; and
FURTHER ORDERED that 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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