10888484 (B.P.A.I. Oct. 27, 2010)

Ex Parte Molaire

Board of Patent Appeals and InterferencesOct 27, 2010

10888484 (B.P.A.I. Oct. 27, 2010)

UNITED STATES PATENT AND TRADEMARK OFFICE 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 APPLICATION NO. FILING DATE FIRST NAMED INVENTOR ATTORNEY DOCKET NO. CONFIRMATION NO. 10/888,484 07/09/2004 Michel F. Molaire 81777/LPK 2930 7590 10/27/2010 Mark G. Bocchetti Patent Legal Staff Eastman Kodak Company 343 State Street Rochester, NY 14650-2201 EXAMINER GILLESPIE, BENJAMIN ART UNIT PAPER NUMBER 1796 MAIL DATE DELIVERY MODE 10/27/2010 PAPER 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. PTOL-90A (Rev. 04/07) UNITED STATES PATENT AND TRADEMARK OFFICE ________________ BEFORE THE BOARD OF PATENT APPEALS AND INTERFERENCES ________________ Ex parte MICHEL F. MOLAIRE ________________ Appeal 2009-006488 Application 10/888,484 Technology Center 1700 ________________ Before PETER F. KRATZ, CATHERINE Q. TIMM, and JEFFREY T. SMITH, Administrative Patent Judges. SMITH, Administrative Patent Judge. DECISION ON APPEAL1 1 The two-month time period for filing an appeal or commencing a civil action, as recited in 37 C.F.R. § 1.304, or for filing a request for rehearing, as recited in 37 C.F.R. § 41.52, begins to run from the “MAIL DATE” (paper delivery mode) or the “NOTIFICATION DATE” (electronic delivery mode) shown on the PTOL-90A cover letter attached to this decision. Appeal 2009-006488 Application 10/888,484 2 STATEMENT OF THE CASE The Appellant appeals under 35 U.S.C. § 134(a) from the Examiner’s rejection of claims 1-6, 8-19, 21-30, 33, and 36-38, all of the pending claims. We have jurisdiction under 35 U.S.C. § 6(b). The Invention Appellant’s invention is directed to a coating composition for an electrophotographic process element and a method for coating an electrophotographic process element with a conductive surface smoothing polyurethane layer prior to subsequent application of a charge generation layer. (Spec. [0001]). Claims 1 and 27 are illustrative: 1. A method for coating an electrophotographic process element adapted to receive an image from a light source with the light image then being converted to an electric charge image with a conductive polyurethane undercoat layer; the method comprising: a) producing a coating solution comprising a dialkyl malonate capped isocyanate or polyisocyanate, a polyol, a monofunctional alcohol and at least one finely divided metal oxide or mixtures thereof; b) coating the substrate with the coating solution to produce a coated substrate; and, c) heating the coated substrate at a temperature up to about 140°C wherein the at least one metal oxide is present in an amount equal to from about 40 to about 90 weight percent of solids in the polyurethane layer. 27. A coating composition for depositing a conductive coating on an electrophotographic process element adapted to receive an image from a light source with the light image then being converted to an electric charge image, the composition comprising a dialkyl malonate capped isocyanate or polyisocyanate, a polyol, a monofunctional alcohol and at least Appeal 2009-006488 Application 10/888,484 3 one finely-divided metal oxide having a particle size of less than 0.1 micron wherein the at least one finely-divided metal oxide is present in an amount equal to from about 40 to about 90 weight percent of solids in the smoothing coating. The Examiner relied on the following references in rejecting the appealed subject matter: Coleman 4,435,450 Mar. 6, 1984 Markusch et al. 4,518,522 May 21, 1985 Hashimoto et al. 5,017,965 May 21, 1991 Towlson 5,653,918 Aug. 5, 1997 Dow Chem. Co., UCARtm VAGF; Product Information (March 2006). Claims 1-6, 8-11, 15, 16, 19, 21, and 24-26 stand rejected under 35 U.S.C. § 103(a), as unpatentable over the combined teachings of Hashimoto and Markusch. Claims 17, 18, 22, 23, 27-30, 33, and 36-38 stand rejected under 35 U.S.C. § 103(a), as unpatentable over the combined teachings of Hashimoto, Markusch, Towlson and UCAR VAGF. Claims 12-14 stand rejected under 35 U.S.C. § 103(a), as unpatentable over the combined teachings of Hashimoto, Markusch, and Coleman. Appeal 2009-006488 Application 10/888,484 4 OPINION2 The Examiner found that Hashimoto discloses a photoelectric apparatus that comprises a charge member and a photosensitive member. The Examiner further found that Hashimoto describes a conductive coating composition, for application to a charge member, comprising the polyurethane which is formed from the reaction product of a hydroxyl functional vinyl and/or vinyl acetate resin and a blocked diphenyl methane and/or hexamethane diisocyanate. (Ans. 3-4). The Examiner found that Hashimoto also discloses a photosensitive member that comprises a conductive coating as an underlayer, although the specifics of the conductive coating composition were not provided. (Ans. 4). The Examiner found that it would have been obvious to utilize an analogous polyurethane conductive coating on the photosensitive member of Hashimoto because the conductive member and photosensitive member are both elements used in a photoelectric apparatus. (Ans. 4). The Examiner recognized the conductive polyurethane coating composition disclosed by Hashimoto was not formed utilizing the claimed blocked polyisocyanate. (Ans. 5). The Examiner found that Markusch described polyurethanes formed from C1-C12 dialkyl malonate blocking agents which deblock at lower temperatures than conventional blocking agents. (Ans. 5). The Examiner determined that it would've been obvious to utilize polyurethanes formed from C1-C12 dialkyl malonate blocking agents in Hashimoto based on the motivation to reduce We will separately address the method and composition claims. Appellant’s arguments are principally directed to the descriptions of Hashimoto and Markusch. Consequently, in rendering our decision, we will also focus on those reference descriptions. Appeal 2009-006488 Application 10/888,484 5 the deblocking and baking temperature required for the coating composition. (Ans. 5-6). Appellant argues that the claimed invention is distinguished from Hashimoto because Hashimoto’s polyurethane binder is formed from a different reaction product (hydroxy functional resin and blocked isocyanate) and is applied only to the charging element not the photosensitive member. (App. Br. 3). Appellant recognized the Examiner cited Markusch for describing C1-C12 dialkyl malonate blocking agents and monofunctional alcohols. (App. Br. 3). Appellant argues that the combination of Hashimoto and Markusch would only lead to a modification of a conductive layer of a charge element of Hashimoto. (App. Br. 3). Claims 1-6, 8-19, and 21-26 The issue presented for review is the following: Did the Examiner err in determining that it would have been obvious to a person of ordinary skill in the art, based on the teachings of Hashimoto and Markusch, to perform the method for coating an electrophotographic process element with a conductive polyurethane undercoat layer formed from a coating solution comprising a dialkyl malonate capped isocyanate or polyisocyanate, a polyol, a monofunctional alcohol and at least one finely divided metal oxide as required by independent claim 1?3 We answer this question in the affirmative. 3 We select independent claim 1 as representative of the method claims 1-6, 8-19, and 21-26. Appellant has not presented separate arguments for specific method claims. Consequently, we limit our discussion to claim 1. Appeal 2009-006488 Application 10/888,484 6 We agree with Appellant. The Examiner has not adequately explained and identified evidence to support why a person of ordinary skill in the art would have found it obvious to utilize the composition described by the claimed invention as suitable for the surface coating of the charge element as undercoating on the photosensitive element. “[R]ejections on obviousness grounds cannot be sustained by mere conclusory statements; instead, there must be some articulated reasoning with some rational underpinning to support the legal conclusion of obviousness.” KSR Int’l Co. v. Teleflex, Inc., 550 U.S. 398, 418 (2007) For the reasons set forth above and those presented by Appellant in his Brief, we reverse the rejections of claims 1-6, 8-19, and 21-26. Claims 27-30, 33, and 36-38 The issue presented for review is the following: Did the Examiner err in determining that it would have been obvious to a person of ordinary skill in the art, based on the teachings of Hashimoto and Markusch, to form a conductive polyurethane coating composition comprising a dialkyl malonate capped isocyanate or polyisocyanate, a polyol, a monofunctional alcohol and at least one finely divided metal oxide as required by independent claim 27?4 We answer this question in the negative. Claim 27 is directed to a composition. Appellant has not argued that it would have been unobvious to utilize C1-C12 dialkyl malonate blocking 4 We select independent claim 27 as representative of the composition claims 27-30, 33, and 36-38. Appellant has not presented separate arguments for specific composition claims. Consequently, we limit our discussion to claim 27. Appeal 2009-006488 Application 10/888,484 7 agents and monofunctional alcohols described by Markusch in the formation of conductive coating compositions. Rather, Appellant argues that the problem addressed by the present invention relates to high unblocking temperature and the generation of undesirable materials that may remain in the polymeric layer which has not been addressed by Hashimoto. (App. Br. 4). However, this is the same problem that is recognized and addressed by Markusch. (Ans. 5; Markusch cols 3-4). Appellant has not argued that a person of ordinary skill in the art would not have been motivated to utilize C1-C12 dialkyl malonate blocking agents and monofunctional alcohols described by Markusch in the conductive coating composition of Hashimoto used for coating the charge member of Hashimoto. (See Brief generally). A preamble describing the use of an invention generally does not limit the claims because the patentability of a composition claim depends on the claimed structure, not on the use or purpose of that structure. See In re Gardiner, 171 F.2d 313, 315-16 (CCPA 1948). For the reasons set forth above and those presented by the Examiner, we affirm the rejection of claims 27-30, 33, and 36-38. DECISION The Examiner’s rejection of claims 27-30, 33, and 36-38 is affirmed. The Examiner’s rejections of claims 1-6, 8-19, and 21-26 are reversed. AFFIRMED-IN-PART bar Appeal 2009-006488 Application 10/888,484 8 MARK G. BOCCHETTI PATENT LEGAL STAFF EASTMAN KODAK COMPANY 343 STATE STREET ROCHESTER, NY 14650-2201