Ex parte KOPP

Board of Patent Appeals and Interferences

Jan 11, 2002

08942954 (B.P.A.I. Jan. 11, 2002)

The opinion in support of the decision being entered today was not written
for publication and is not binding precedent of the Board.
Paper No. 21
UNITED STATES PATENT AND TRADEMARK OFFICE
____________
BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
____________
Ex parte WALTER KOPP
____________
Appeal No. 2000-0154
Application No. 08/942,954
____________
ON BRIEF
____________
Before FLEMING, RUGGIERO, and BARRY, Administrative Patent
Judges.
BARRY, Administrative Patent Judge.
DECISION ON APPEAL
The examiner rejected the appellant‘s claims 21-36. He
appeals therefrom under 35 U.S.C. § 134(a). We reverse.
BACKGROUND
The appellant’s invention fixes “duplex” toner images,
i.e., toner images printed on both sides of a paper.
Conventional electrographic printers use a preheating saddle,
a heated fixing drum, and a pressure roller to fix toner
Appeal No. 2000-0154 Page 2
Application No. 08/942,954
images on a web or sheet of paper. When a paper already
printed and fixed on one side is to be printed and fixed on
the other, the paper must be passed over the hot surface of
the preheating saddle for the second fixing. Unfortunately,
the image that is already fixed is heated to such an extent
that it softens and smears on the surface of the saddle. In
contrast, the appellant’s invention senses the temperature of
at least one region of the sliding surface of a preheating
saddle and controls the heating elements in the saddle
according to a desired surface temperature. Such controlling
prevents damage to the image that is already fixed while still
being able to fix the second toner image during the second
pass.
Claim 21, which is representative for present purposes,
follows:
21. An electrographic printer thermal fixing
system, comprising:
a heat transfer fixing station for fixing a
first toner image on a first side of a recording
medium by direct heating thermal contact between the
recording medium and at least one heating roller;
Appeal No. 2000-0154 Page 3
Application No. 08/942,954
a heat transfer fixing station for fixing a
second toner image on a second side of the recording
medium facing opposite the first side by direct
heating thermal contact between the recording medium
and at least one heating roller;
a pre-heating saddle along a running direction
of the recording medium for preheating the recording
medium preceding the heat transfer fixing station
which fixes the second image;
said preheating saddle comprising a sliding
surface for heating and supporting the recording
medium over the entire first side at the contact
region with the heating saddle;
at least one temperature sensor for providing
signals which are dependent on a temperature of said
heating saddle at a region of said sliding surface;
a plurality of heating elements arranged in said
heating saddle below said sliding surface; and
a heating control for controlling the
temperature of said heating saddle according to a
desired temperature, the heating control receiving
signals from said temperature sensor and controlling
heating of said heating elements.
(Appeal Br. at 25.)
The prior art applied by the examiner in rejecting the
claims follows:
Naeser et al. (“Naeser”) 4,147,922 Apr.
3, 1979
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Application No. 08/942,954
Yaguchi 5,151,743 Sep. 29,
1992
Sugaya et al. (“Sugaya”) 5,179,417 Jan.
12, 1993.
Claims 21-23 and 25-36 stand rejected under 35 U.S.C. § 103(a)
as obvious over Sugaya in view of Naeser. Claim 24 stands
rejected under § 103(a) as obvious over Sugaya in view of
Naeser further in view of Yaguchi.
OPINION
After considering the record, we are persuaded that the
examiner erred in rejecting claims 21-36. Accordingly, we
reverse.
Rather than reiterate the positions of the examiner or
appellant in toto, we address their main point of contention.
First, "relying on the description spanning col.l, line 13
though co1.2, line 38 and Fig.4,” (Examiner’s Answer, ¶ 11),
the examiner asserts, “Sugaya et al. describes the convention
[sic] use of a continuous web type duplex printing device
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Application No. 08/942,954
using a preheating saddle before each fixing device of each
respective printer." (Id.) The appellant argues, "Sugaya
teaches elimination of the second pre-heating saddle for dual
printing,
. . Naeser . . . shows a pre-heating [sic] saddle in the
context of a single printer." (Reply Br. at 2.)
In deciding obviousness, “[a]nalysis begins with a key
legal question -- what is the invention claimed?” Panduit
Corp. v. Dennison Mfg. Co., 810 F.2d 1561, 1567, 1 USPQ2d
1593, 1597 (Fed. Cir. 1987). Here, independent claim 21
specifies in pertinent part the following limitations: "a heat
transfer fixing station for fixing a first toner image on a
first side of a recording medium by direct heating thermal
contact between the recording medium and at least one heating
roller; a heat transfer fixing station for fixing a second
toner image on a second side of the recording medium facing
opposite the first side by direct heating thermal contact
between the recording medium and at least one heating roller;
a pre-heating saddle along a running direction of the
Appeal No. 2000-0154 Page 6
Application No. 08/942,954
recording medium for preheating the recording medium preceding
the heat transfer fixing station which fixes the second image.
. . ." Similarly, independent claim 32 specifies in pertinent
part the following limitations: "fixing a first toner image on
a first side of a recording medium by direct heating thermal
contact between the recording medium and at least one heating
roller of a heat transfer fixing station; fixing a second
toner image on a second side of said recording medium opposite
said first side by direct heating thermal contact between the
recording medium and at least one heating roller of a heat
transfer fixing station; providing a preheating saddle
preceding the heat transfer fixing station which fixes the
second image, said preheating saddle preceding the heat
transfer fixing station for the second image in a running
direction of the recording medium. . . .”
Also similarly, independent claim 33 specifies in
pertinent part the following limitations: “a heat transfer
fixing station for fixing a first toner image on a first side
of a recording medium by direct heating thermal contact
between a recording medium and at least one heating roller; a
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Application No. 08/942,954
heat transfer fixing station for fixing a second toner image
on a second side of the recording medium facing opposite the
first side by direct heating thermal contact between the
recording medium and at least one heating roller; a pre-
heating saddle along a running direction of the recording
medium for preheating the recording medium preceding the heat
transfer fixing station which fixes the second image. . . .”
Further similarly, independent claim 35 specifies in pertinent
part the following limitations: “fixing a first toner image on
a first side of a recording medium by direct heating thermal
contact between the recording medium and at least one heating
roller of a heat transfer fixing station; fixing a second
toner image on a second side of said recording medium opposite
said first side by direct heating thermal contact between the
recording medium and at least one heating roller of a heat
transfer fixing station; providing a pre-heating saddle
preceding the heat transfer fixing station which fixes the
second image, said pre-heating saddle preceding the heat
transfer fixing station for the second image in a running
direction of the recording medium. . . .” Accordingly, the
independent claims require inter alia fixing duplex toner
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Application No. 08/942,954
images on a recording medium wherein the medium is passed over
the surface of a preheating saddle to heat the medium for a
second fixing.
Having determined what subject matter is being claimed,
the next inquiry is whether the subject matter is obvious.
"’A prima facie case of obviousness is established when the
teachings from the prior art itself would appear to have
suggested the claimed subject matter to a person of ordinary
skill in the art.’" In re Bell, 991 F.2d 781, 782, 26 USPQ2d
1529, 1531 (Fed. Cir. 1993) (quoting In re Rinehart, 531 F.2d
1048, 1051, 189 USPQ 143, 147 (CCPA 1976)). “Prior art
references . . . must be read as a whole and consideration
must be given where the references diverge and teach away from
the claimed invention.” Akzo N.V. v. U.S. Intn’l Trade
Comm’n, 808 F.2d 1471, 1481, 1 USPQ2d 1241, 1246 (Fed. Cir.
1986) (citing W.L. Gore & Assocs. v. Garlock, 721 F.2d 1540,
1550, 220 USPQ 303, 311 (Fed. Cir. 1983)). “A reference may
teach away by warning expressly that an element of a claimed
invention ‘should not, or cannot be used’ with the prior art.”
Appeal No. 2000-0154 Page 9
Application No. 08/942,954
Lance Leonard Barry, Teaching A Way Is Not Teaching Away, 79
J. Pat. & Trademark Off. Soc’y 867, 870 (1997)(quoting
Para-Ordnance Mfg. v. SGS Importers Int'l.,73 F.3d 1085, 1090,
37 USPQ2d 1237, 1241 (Fed. Cir 1995)).
Here, contrary to the examiner’s assertion, Sugaya does
not disclose a duplex printing device using a preheating
saddle. To the contrary, the reference teaches that a
preheating saddle cannot, or at least should not, be used in
duplex printing. Specifically, if a preheating saddle is used
to fix images during duplex printing, Sugaya warns that
“malfunctions will arise which will undesirably degrade the
quality of the printing operation.” Col. 1, ll. 66-68. More
specifically, “a portion of the developed toner images
representing certain characters is not printed on the printing
paper, col. 2, ll. 23-25; “a portion of the printed images is
not visually recognized;” id. at ll. 34-35; and “the surfaces
of the preheating plate and the back-up roll are undesirably
contaminated with the molten toner.” Id. at ll. 36-38.
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Application No. 08/942,954
Because Naeser discloses using a preheating saddle only
for single-sided printing, col. 4, ll. 23-24 (“[t]he data
carrier has toner images applied to one side thereof. . . .”),
it cannot overcome Sugaya’s express teaching away. Relying on
Yaguchi merely to teach “a film of PTFE,” (Examiner's Answer,
¶ 10), moreover, the examiner fails to allege, let alone show,
that the tertiary reference overcomes the express teaching
away.

Because Sugaya teaches away expressly from using a
preheating saddle in duplex printing, we are not persuaded
that the teachings from the applied prior art would have
suggested the limitations of "a heat transfer fixing station
for fixing a first toner image on a first side of a recording
medium by direct heating thermal contact between the recording
medium and at least one heating roller; a heat transfer fixing
station for fixing a second toner image on a second side of
the recording medium facing opposite the first side by direct
heating thermal contact between the recording medium and at
least one heating roller; a pre-heating saddle along a running
direction of the recording medium for preheating the recording
Appeal No. 2000-0154 Page 11
Application No. 08/942,954
medium preceding the heat transfer fixing station which fixes
the second image;" "fixing a first toner image on a first side
of a recording medium by direct heating thermal contact
between the recording medium and at least one heating roller
of a heat transfer fixing station; fixing a second toner image
on a second side of said recording medium opposite said first
side by direct heating thermal contact between the recording
medium and at least one heating roller of a heat transfer
fixing station; providing a preheating saddle preceding the
heat transfer fixing station which fixes the second image,
said preheating saddle preceding the heat transfer fixing
station for the second image in a running direction of the
recording medium;” “a heat transfer fixing station for fixing
a first toner image on a first side of a recording medium by
direct heating thermal contact between a recording medium and
at least one heating roller; a heat transfer fixing station
for fixing a second toner image on a second side of the
recording medium facing opposite the first side by direct
heating thermal contact between the recording medium and at
least one heating roller; a pre-heating saddle along a running
direction of the recording medium for preheating the recording
Appeal No. 2000-0154 Page 12
Application No. 08/942,954
medium preceding the heat transfer fixing station which fixes
the second image;” and “fixing a first toner image on a first
side of a recording medium by direct heating thermal contact
between the recording medium and at least one heating roller
of a heat transfer fixing station; fixing a second toner image
on a second side of said recording medium opposite said first
side by direct heating thermal contact between the recording
medium and at least one heating roller of a heat transfer
fixing station; providing a pre-heating saddle preceding the
heat transfer fixing station which fixes the second image,
said pre-heating saddle preceding the heat transfer fixing
station for the second image in a running direction of the
recording medium. . . .” Therefore, we reverse the rejection
of rejection of independent claims 21, 32, 33, and 35. We
also reverse the rejection of claims 22-31, claim 34, and
claim 36, which respectively depend from claims 21, 33, and
35.
CONCLUSION
In summary, the rejection of claims 21-36 under § 103(a)
is reversed.
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Application No. 08/942,954
REVERSED
MICHAEL R. FLEMING )
Administrative Patent Judge )
)
)
)
Appeal No. 2000-0154 Page 14
Application No. 08/942,954
) BOARD OF PATENT
JOSEPH F. RUGGIERO ) APPEALS
Administrative Patent Judge ) AND
) INTERFERENCES
)
)
)
LANCE LEONARD BARRY )
Administrative Patent Judge )
Appeal No. 2000-0154 Page 15
Application No. 08/942,954
SCHIFF, HARDIN & WAITE
PATENT DEPARTMENT
6600 SEARS TOWER
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