Ex Parte Masuda

Board of Patent Appeals and Interferences

Feb 15, 2012

11336909 - (D) (B.P.A.I. Feb. 15, 2012)

UNITED STATES PATENT AND TRADEMARK OFFICE
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BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
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Ex parte MINORU MASUDA
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Appeal 2010-011452
Application 11/336,909
Technology Center 1700
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Before BRADLEY R. GARRIS, PETER F. KRATZ, and DEBORAH
KATZ, Administrative Patent Judges.

GARRIS, Administrative Patent Judge.

DECISION ON APPEAL
Appellant appeals under 35 U.S.C. § 134 from the Examiner's
decision rejecting claims 2-17. We have jurisdiction under 35 U.S.C. § 6.
We AFFIRM.
Appellants claim a toner container comprising a flexible member
containing a toner which satisfies the relationship T < -0.05É›+ 0.032 wherein
É› represents a void ratio and T represents a torque (claim 10).

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Representative claim 10 reads as follows:
10. A toner container comprising a flexible member containing a toner
and an adapter by which the toner container is set to an image forming
apparatus, wherein the toner container reduces volume as the toner is
discharged therefrom, and wherein

the toner comprises binder resin and colorant, wherein the toner
satisfies the following relationship (1):

T < -0.05É› + 0.032 (1)

wherein É› represents a void ratio of a bulk toner formed by
consolidating the toner with a load of 500 to 3000 N/m2, and T represents a
torque (Nm) needed for intruding a cone rotor having a vertical angle of 60°,
an edge length of 30 mm, and forty-eight ditches having a saw-tooth shaped
cross section and which gradually deepen from 0 mm at the vertex to 1 mm
at the base, into the bulk toner at a speed of 5 mm/min while rotating the
cone rotor,

wherein the torque is measured when the cone rotor is intruded into
the bulk toner at a length of 20 mm.

The references listed below are relied upon by the Examiner as
evidence of obviousness:
Sugiura 2003/0232266 A1 Dec. 18, 2003
Emoto 2004/0146795 A1 Jul. 29, 2004
Matsumoto 2004/0247343 A1 Dec. 09, 2004
Shu 2006/0068606 A1 Mar. 30, 2006
Under 35 U.S.C. § 103(a), the Examiner rejects:
claims 2-7 and 9-17 as unpatentable over Matsumoto as evidenced by
Appellant's admission 1 in combination with Sugiura as evidenced by
Appellant's admission 2;
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claims 2, 3, 5, and 7-17 as unpatentable over Matsumoto as evidenced
by Appellant's admission 1 in combination with Emoto as evidenced by
Appellant's admission 3; and
claims 2-17 as unpatentable over Matsumoto as evidenced by
Appellant's admission 1 in combination with Shu as evidenced by
Appellant's admission 2. 1

Appellant's arguments are directed to the limitations of independent
claim 10 only. Therefore, we focus solely on this claim in our disposition of
the appeal.
We sustain each of the above rejections for the reasons well expressed
by the Examiner in the Answer. The following comments are added for
emphasis.
The Examiner's basic position is that it would have been obvious to
provide Matsumoto's toner container with the toners respectively
exemplified by Sugiura (Example 13), Emoto (Example 1), and Shu
(Examples 1-2) in order to obtain the disclosed benefits thereof and that
these toners reasonably appear to inherently satisfy the claim 10 relationship
because of their similarities to the toners disclosed and claimed by Appellant
as evidenced by Appellant's admissions 2 and 3 (Ans. 4-21).
Appellant argues that the rejections are improper because the
Examiner has given no reason why an artisan would select the exemplified

1 Appellant's admission 1 relates to subject matter recited in a non-argued
dependent claim. Appellant's "admissions" 2 and 3 might be more aptly
characterized as Specification disclosures concerning the types of toners
which satisfy the claim 10 relationship. (See Ans. 4-21).
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toners of Sugiura, Emoto, or Shu "as opposed to all other known toners in
the art" (see, e.g., App. Br. 6).
This argument is unpersuasive because it is based on an incorrect test
for obviousness. The test is not whether an artisan would have chosen a
particular prior art toner from all other prior art toners. See Merck & Co.,
Inc. v. Biocraft Labs., Inc., 874 F.2d 804, 807 (Fed. Cir. 1989) ("That the
[prior art] discloses a multitude of effective combinations does not render
any particular formulation less obvious."). Rather, "the test is whether the
references, taken as a whole, would have suggested appellant's invention to
one of ordinary skill in the [relevant] arts at the time the invention was
made." In re Merck & Co., 800 F.2d 1091, 1097 (Fed. Cir. 1986).
Appellant also argues that the rejections improperly rely on the data in
Table 2 of the Specification because "this data is the work of Applicant and
it is not part of the prior art" (see, e.g., App. Br. para. bridging 5-6).
Contrary to Appellant's argument, it is proper for the Examiner to rely
on the Specification to confirm that the applied prior art toners inherently
satisfy the claim 10 relationship. See In re Huai-Hung Kao, 639 F.3d 1057,
1070 (Fed. Cir. 2011) ("[s]ubstantial evidence supports the Board's finding,
based upon the specification, which confirms that the claimed 'food effect' is
an inherent property of oxymorphone itself"). Also contrary to Appellant's
argument, the Examiner does not rely on the Specification as though it were
prior art. See id. ("[t]his is not a case where the Board relied on an unknown
property of the prior art for a teaching").
Finally, Appellant argues that Example 1 and Comparative Example 1
in Table 2 of the Specification do not adequately support the Examiner's
determination that the exemplified toners of Sugiura, Emoto, and Shu
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inherently satisfy the claim 10 relationship (see, e.g., App. Br. para. bridging
5-6).
The Examiner's determination is not limited to these Examples of
Specification Table 2. Instead, as fully detailed in the Answer (Ans. 23-48),
the Examiner relies on multiple other Table 2 Examples and on multiple
other reasons for making this determination. The Examiner has provided
this record with substantial evidence supporting the determination that the
claim 10 relationship is inherently satisfied by the applied prior art toners.
The decision of the Examiner is 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)(1)(iv).
AFFIRMED

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