10286751 (B.P.A.I. Oct. 22, 2007)

Ex Parte Murofushi et al

Board of Patent Appeals and InterferencesOct 22, 2007

10286751 (B.P.A.I. Oct. 22, 2007)

UNITED STATES PATENT AND TRADEMARK OFFICE ____________ BEFORE THE BOARD OF PATENT APPEALS AND INTERFERENCES ____________ Ex parte TOSHIAKI MUROFUSHI, KATSUHISA ARAI, FUMITAKA NAKAJIMA, HIDEO KATAYAMA and KAZUNARI KOGA ____________ Appeal 2007-2204 Application 10/286,751 Technology Center 1700 ____________ Decided: October 22, 2007 ____________ Before EDWARD C. KIMLIN, CATHERINE Q. TIMM, and JEFFREY T. SMITH, Administrative Patent Judges. KIMLIN, Administrative Patent Judge. DECISION ON APPEAL This is an appeal from the final rejection of claims 1, 3-5, 8, 11, 12, 14-18, 20-22 and 29-43. Claim 1 is illustrative: 1. A method of recycling applicable to recycling a used process cartridge containing toner, comprising: Appeal 2007-2204 Application 10/286,751 isolating a process cartridge to which toner has adhered, the process cartridge having at least one structural member formed of a hydrophobic thermoplastic material and being attachable at an electrographic image forming device and the toner comprising at least a hydrophobic thermoplastic resin material; and washing the process cartridge with water. The Examiner relies upon the following references as evidence of obviousness: Yoshida 5,621,939 Apr. 22, 1997 Ogawa 5,750,302 May 12, 1998 Oka 5,983,059 Nov. 9, 1999 Sugiyama 6,464,797 B1 Oct. 15, 2002 Kawamura 6,088,561 Jul. 11, 2000 Magome 6,596,452 B2 Jul. 22, 2003 Shinozaki 6,663,719 B2 Dec. 16, 2003 Appellants' claimed invention is directed to a method of recycling cartridges containing toner wherein the cartridge is formed of a hydrophobic thermoplastic material and the toner comprises a hydrophobic thermoplastic resin. The method entails washing the cartridge with water. Appealed claims 1, 3-5, 11, 12, 14, 15, 20-22, 29-35 and 39-43 stand rejected under 35 U.S.C. Â§ 103(a) as being unpatentable over Oka, Kawamura or Shinozaki in view of Magome and Ogawa. Claims 8, 16-18 and 36-38 stand rejected under 35 U.S.C. Â§ 103(a) as being unpatentable over the stated combination of references further in view of Sugiyama and Yoshida. Appellants have not set forth separate arguments for any particular claims in the two groups of claims rejected by the Examiner. Accordingly, the two groups of claims rejected by the Examiner stand or fall together. 2 Appeal 2007-2204 Application 10/286,751 We have thoroughly reviewed each of Appellants' arguments for patentability. However, we are in complete agreement with the Examiner that the claimed subject matter would have been obvious to one of ordinary skill in the art within the meaning of Â§ 103 in view of the applied prior art. Accordingly, we will sustain the Examiner's rejections for the reasons set forth in the Answer, and we add the following primarily for emphasis. Appellants do not dispute the Examiner's factual determination that Oka, Kawamura and Shinozaki evidence that it was known in the art to clean cartridges which contain toner by applying water. As recognized by the Examiner, the three references are silent with respect to the hydrophobic nature of the cartridge material and the toner material. However, there is no dispute that Magome and Ogawa support the Examiner's finding that it was conventional in the art to use hydrophobic material to form the cartridge and toner composition. Accordingly, we have no doubt that one of ordinary skill in the art would have found it obvious, based on the state of the prior reflected by the applied references, to clean toner containing cartridges with water for recycle purposes. Significantly, neither Oka, Kawamura nor Shinozaki provides any teaching that washing with water is not suitable for hydrophobic material, and Appellants have not proffered any evidence that the known use of water to clean toner-containing cartridge material was limited to non-hydrophobic material. Appellants maintain that "[o]ne of ordinary skill in the art when faced with the problem of removing hydrophobic toners from hydrophobic process cartridge components, based on the very nature of the toner materials and the components, would not have believed that any reasonable expectation of success could be found in using water as a cleaning medium" (Br. 8, second 3 Appeal 2007-2204 Application 10/286,751 para.). Appellants further submit that "[o]ne of ordinary skill in the art would, in fact, have recognized that the terms water and hydrophobic represent mutually exclusive concepts" (id.). We do not subscribe to Appellants' rationale. Manifestly, one of ordinary skill in the art might have reasonably expected that an organic- based solvent would be more effective in removing hydrophobic toner material from a cartridge, but this is not to say that the same artisan would not have also reasonably expected that using a water wash would sufficiently remove hydrophobic toner material from the cartridge for recycling purposes. Also, one of ordinary skill in the art would have to take into consideration possible damage to the hydrophobic cartridge caused by a dissolving organic solvent. In essence, we are quite confident that one of ordinary skill in the art would have needed to resort to only routine experimentation to determine whether water or an organic solvent was suitable for washing a cartridge made of a particular material. It cannot be gainsaid that water was a notoriously well known washing medium at the time of filing the present application. Regarding the separate Â§ 103 rejection of claims 8, 16-18 and 36-38, Appellants do not advance additional arguments but state that "[a]ll of the arguments presented above in support of the patentability of claims 1, 3-5, 11, 12, 14, 15, 20-22, 29-35 and 39-43 apply equally to the patentability of claims 8, 16-18 and 36-38 because Sugiyama and Yoshida do not overcome the shortfalls enumerated above in the combinations of the other applied references to the subject matter of at least independent claims 1 and 36" (Br. 13, second para.). 4 Appeal 2007-2204 Application 10/286,751 As a final point, we note that Appellants base no argument upon objective evidence of nonobviousness, such as unexpected results, which would serve to rebut the inference of obviousness established by the applied prior art. In conclusion, based on the foregoing and the reasons well stated by the Examiner, the Examiner's decision rejecting the appealed claims is affirmed. No time period for taking any subsequent action in connection with this appeal may be extended under 37 C.F.R. Â§ 1.136(a)(vi). AFFIRMED cam OLIFF & BERRIDGE, PLC P. O. BOX 320850 ALEXANDRIA, VA 22320-4850 5