Ex Parte Nakada et al

Board of Patent Appeals and Interferences

Apr 28, 2004

09841926 (B.P.A.I. Apr. 28, 2004)

1 In an appeal in which claims have been at least twice
rejected, the board has jurisdiction as discussed in Ex parte
Lemoine, 46 USPQ2d 1432 (Bd. Pat. App. & Int. 1995).
1
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not written for publication and is not binding precedent of the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. 22
UNITED STATES PATENT AND TRADEMARK OFFICE
__________
BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
__________
Ex parte KAZUYA NAKADA and YOSHINORI TAKAHASHI
__________
Appeal No. 2004-0375
Application 09/841,926
___________
HEARD: APRIL 15, 2004
___________
Before KIMLIN, OWENS and JEFFREY T. SMITH, Administrative Patent
Judges.
OWENS, Administrative Patent Judge.
DECISION ON APPEAL
This appeal is from a nonfinal rejection of claims 1 and 2,
which are all of the claims in the application.1
THE INVENTION
The appellants claim a semiconductive roller which, the
appellants state, is useful as a charging roller, developing
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Application 09/841,926

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roller, transfer roller or cleaning roller used around a
photoreceptor drum of an image forming apparatus (specification,
page 1, lines 7-10). Claim 1 is illustrative:
1. A semiconductor roller comprising:
a semiconductive elastic layer made of silicone rubber
comprising carbon black formed around a conductive shaft body,

wherein a resin layer including a hard film material is
formed on the outer circumference of said elastic layer via a
coupling agent layer, wherein the hard film material further
comprises an amino resin and a crosslinking component, wherein
the ratio of the amino resin to the crosslinking component is
about 40/50 to about 20/80 by weight.
THE REFERENCES
Ishii et al. (Ishii) 5,925,893 Jul. 20, 1999
Takagi et al. (Takagi) 6,067,434 May 23, 2000
THE REJECTION
Claims 1 and 2 stand rejected under 35 U.S.C. § 103 as being
unpatentable over Takagi in view of Ishii.
OPINION
We affirm the aforementioned rejection.
The appellants state that the claims stand or fall together
(brief, page 3). We therefore limit our discussion to one claim,
i.e., claim 1. See In re Ochiai, 71 F.3d 1565, 1566 n.2, 37
USPQ2d 1127, 1129 n.2 (Fed. Cir. 1995); 37 CFR
§ 1.192(c)(7)(1997).
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Application 09/841,926

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Takagi discloses a developing roller having a highly
conductive shaft (2) and, around the outer periphery of the
shaft, an elastic layer (3) (col. 3, lines 57-62). The elastic
layer is covered, optionally over its entire surface, with a high
resistivity surface layer which can be a urea resin or a melamine
resin (col. 6, lines 34-41; col. 8, lines 9-11). Urea resin and
melamine resin are among Takagi’s preferred surface layer
materials (col. 6, lines 47-48). In an example, a melamine resin
is mixed with an oil free alkyd resin in a 1:4 ratio (col. 10,
lines 54-57). There is no dispute as to whether the oil free
alkyd resin is a crosslinking component. The disclosed elastic
layer materials include silicon rubber (col. 4, lines 11-14).
For resistivity adjustment, the elastic layer includes 0.01-1
parts by weight of an ionically conductive material and can
include a suitable amount of an electronically conductive
material (col. 5, lines 11-55). The disclosed electronically
conductive materials include carbon black (col. 5, lines 55-56).
Takagi does not disclose a coupling layer between the
elastic layer and the high resistivity surface layer. Ishii,
however, teaches that a coupling layer between a carbon black-
containing silicone rubber layer and a polyurethane outer layer
of a semiconductive roller improves the adhesion between the
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silicone rubber and the polyurethane (col. 3, lines 9-27). It is
undisputed that Ishii would have fairly suggested, to one of
ordinary skill in the art, including a coupling layer between
Takagi’s silicon rubber elastic layer and high resistivity
surface layer made from urea resin or melamine resin to obtain
improved adhesion between these layers.
We therefore conclude that the combined disclosures of
Takagi and Ishii would have rendered the roller claimed in the
appellants’ claim 1 prima facie obvious to one of ordinary skill
in the art.
The appellants argue that polyurethane, but not silicone
rubber, is among Takagi’s five preferred elastic layer materials
(col. 4, lines 16-19), and that polyurethane is Takagi’s only
exemplified elastic layer material (brief, pages 4-5; reply
brief, page 2). This argument is not well taken because Takagi
is not limited to the preferred materials or the examples. See
In re Fracalossi, 681 F.2d 792, 794 n.1, 215 USPQ 569, 570 n.1
(CCPA 1982); In re Kohler, 475 F.2d 651, 653, 177 USPQ 399, 400
(CCPA 1973).
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The appellants argue that Takagi does not indicate when an
electronically conductive material such as carbon black would be
needed (brief, page 5). Determining the amount of carbon black
would have been prima facie obvious to one of ordinary skill in
the art through no more than routine experimentation to achieve
the desired effect of adjusting, to the appropriate level, the
resistivity of the elastic layer (col. 5, lines 42-56). See In
re Boesch, 617 F.2d 272, 276, 205 USPQ 215, 219 (CCPA 1980); In
re Aller, 220 F.2d 454, 456, 105 USPQ 233, 235 (CCPA 1955).
The appellants argue that Takagi’s comparative example 3,
wherein carbon black is included in the elastic layer, shows
significantly poor repeatability of gradient, crushed
photographic image, and poor half-tone repeatability and,
therefore, teaches away from using carbon black (brief, pages 5-
6; reply brief, page 5). This argument is not persuasive because
in that comparative example there is no high resistivity surface
layer on the elastic layer. Moreover, Takagi does not disclose
that the roller in that comparative example is useless as a
semiconductive roller. Instead, Takagi merely teaches that
although the image produced using the roller is very
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monochromatic and has excellent repeatability of characters, it
has the undesirable characteristics pointed out by the appellants
(col. 12, lines 47-52).
The appellants argue that Takagi’s ionically conductive
material is necessary for the invention and cannot be removed
(brief, page 5; reply brief, page 4). We are not convinced by
this argument because in the appellants’ claim 1, “elastic layer
made of silicone rubber comprising carbon black” encompasses an
elastic layer containing other components such as an ionically
conductive material. See In re Baxter, 656 F.2d 679, 686, 210
USPQ 795, 802 (CCPA 1981).
The appellants argue that Takagi’s silicone rubber elastic
layer material is one of 4,096 possible disclosed materials or
their mixtures, and that Takagi does not provide any motivation
for selecting silicone rubber from among them (reply brief,
page 2). This argument is not persuasive because the fact that
many are disclosed would not have made any of them less obvious,
particularly where, as here, the material recited in the
appellants’ claim is used for the identical purpose taught by the
reference. See Merck & Co. v. Biocraft Labs., 874 F.2d 804, 807,
10 USPQ2d 1843, 1846 (Fed. Cir.), cert. denied, 493 U.S. 975
(1989).
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The appellants argue that claim 1 requires a resin layer
formed on the entire outer circumference of the elastic layer
(reply brief, page 3). This feature is not required by the
appellants’ claim 1, but is disclosed by Takagi (col. 8, lines 9-
11).
The appellants argue that if there is motivation to include
carbon black in Takagi’s elastic layer, it would be in such
quantities to adjust resistivity without adversely affective
ionic conductivity (reply brief, page 4). This argument is not
persuasive even if it is correct because the appellants’ claim 1
does not require any particular amount of carbon black and,
therefore, encompasses the amount argued by the appellants.
For the above reasons we conclude that a prima facie case of
obviousness of the appellants’ claimed invention has been
established and has not been effectively rebutted by the
appellants.
DECISION
The rejection of claims 1 and 2 under 35 U.S.C. § 103 over
Takagi in view of Ishii is affirmed.
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No time period for taking any subsequent action in
connection with this appeal may be extended under 37 CFR
§ 1.136(a).
AFFIRMED
)
EDWARD C. KIMLIN )
Administrative Patent Judge )
)
)
) BOARD OF PATENT
TERRY J. OWENS )
Administrative Patent Judge ) APPEALS AND
)
) INTERFERENCES
)
JEFFREY T. SMITH )
Administrative Patent Judge )
TJO/ki
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Peter C. Schechter
Darby & Darby P.C.
805 Third Avenue
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