Ex Parte Nakajima et al

Patent Trial and Appeal Board

Jun 10, 2016

13579976 (P.T.A.B. Jun. 10, 2016)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE
13/579,976 08/20/2012
55694 7590 06/14/2016
DRINKER BIDDLE & REATH (DC)
1500 K STREET, N.W.
SUITE 1100
WASHINGTON, DC 20005-1209
FIRST NAMED INVENTOR
Shingo Nakajima
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
ATTORNEY DOCKET NO. CONFIRMATION NO.
048404-0118 (488219) 1491
EXAMINER
LAN, YAN
ART UNIT PAPER NUMBER
1782
NOTIFICATION DATE DELIVERY MODE
06/14/2016 ELECTRONIC
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.
Notice of the Office communication was sent electronically on above-indicated "Notification Date" to the
following e-mail address( es):
DBRIPDocket@dbr.com
penelope.mongelluzzo@dbr.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE
THE PATENT TRIAL AND APPEAL BOARD
Ex parte SHINGO NAKAJIMA, 1
Jun Sugawara, and Daisuke Shoji
Appeal2015-000338
Application 13/579,976
Technology Center 1700
Before ROMULO H. DELMENDO, MARK NAGUMO, and
JEFFREY R. SNAY, Administrative Patent Judges.
NAGUMO, Administrative Patent Judge.
DECISION ON APPEAL
Shingo Nakajima, Jun Sugawara, and Daisuke Shoji ("Nakajima")
timely appeal under 35 U.S.C. § 134(a) from the Final Rejection2 of
claims 1-5, which are all of the pending claims. We have jurisdiction.
35 U.S.C. § 6. We affirm.
1 The real parties in interest are identified as Sumitomo Electric Industries,
Ltd. and Sumitomo Electric Fine Polymer, Inc. (Appeal Brief,
filed 4 May 2014 ("Br."), 1.)
2 Office action mailed 3 December 2013 ("Final Rejection"; cited as "FR").
Appeal2015-000338
Application 13/579,976
A. Introduction 3
OPfNION
The subject matter on appeal relates to a fixing belt used for fixing, by
heating, a toner image transferred to a recording sheet. (Spec. 1, 11. 5---6.)
Fixing belts4 having a fluororesin surface layer attached to a tubular base of
metal or polyimide via a conductive primer layer are said to be known.
(Id. at 1. 21, to 2, 1. 1.) The conductive primer layer is said to suppress
electrostatic charging and to prevent offset. (Id. at 1, 11. 30-32; 2, 11. 19-22.)
The primer layer is preferably mainly a fluororesin to improve the adhesion
of the fluororesin surface layer with the tubular base. (Id. at 2, 11. 16-19.)
Electrical conductivity is provided by carbon black or a metal oxide filler,
but these materials are said to diminish the fluorine component on the
surface of the primer layer, leading to diminished adhesive force and
diminished durability of the fixing belt. (Id. at 11. 20-27.)
The '976 Specification reveals that these problems may be overcome
by providing a primer layer that contains fluorine-containing ion conductive
agents together with a fluororesin. Such primer layers are said to yield
fixing belts with high adhesion and "no problems in terms of appearance."
(Id. at 3, 11. 23-28.) The Specification proposes that the common C-F and F-
structures in the fluororesins and the fluorine-containing ion conductive
3 Application 13/579,976, Fixing belt, filed 20 August 2012, UNDER
35 U.S.C. § 371 as the national stage of PCT/JP2011/064216,
filed 22 June 2011, claiming the benefit of JP 2010-194092,
filed 31 August 2010. We refer to the '"976 Specification," which we cite
as "Spec."
4 Fixing belts are also referred to as "fixing rollers" (id. at 1. 21) or "fixing
sleeves" (id. at 1. 26).
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Appeal2015-000338
Application 13/579,976
agents result in good affinity between the interfaces of the ion conductive
agents and the fluororesins constituting the surface layer and the primer
layer. (Id. at 4, 11. 10-16.)
Claim 1 is representative of the dispositive issues and reads:
A fixing belt comprising
a tubular base;
a surface layer provided as an outermost layer and
composed of a fluororesin A; and
a primer layer provided in contact with the surface layer,
wherein the primer layer contains
a fluororesin B and
a fluorine-containing ion conductive agent.
(Br., Claims App. A-1; some indentation, paragraphing, and emphasis
added.)
The Examiner maintains the following grounds of rejection5 :
A. Claims 1--4 stand rejected under 35 U.S.C. § 103(a) in view
of the combined teachings of Kitajima 6 and Takahiko. 7
Al. Claim 5 stands rejected under 35 U.S.C. § 103(a) in view of
the combined teachings ofKitajima, Takahiko, and Ikeda. 8
5 Examiner's Answer mailed 31 July 2014 ("Ans.").
6 Tadashi Kitajima et al., Polyimide composite tube and method of
manufacturing the same, U.S. Patent No. 5,582,886 (1996).
7 Takahiko Okazaki and Yasuhiro Sako, Conductive membrane for OA
equipment, JP 2002-338801 (2002) (JPO machine-translation provided by
the Examiner with the Office Action mailed 28 May 2013).
8 Kazuaki Ikeda et al., Transfer belt for image forming apparatus, U.S.
Patent Application Publication 20078/0292173 Al (2007).
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Application 13/579,976
B. Discussion
Findings of fact throughout this Opinion are supported by a
preponderance of the evidence of record.
Briefly, the Examiner finds that Kitajima teaches a fixing belt meeting
all the limitations of claim 1 but for the presence of lithium
trifluoromethanesulfonate (hereinafter "Li-0Ts"9) in the primer layer.
In particular, the Examiner finds, Kitajima discloses a fluororesin primer
with carbon black powder. (FR 4, i-f 6, citing Kitajima, col 9, 11. 56-64.)
The Examiner finds that Takahiko describes conductive members for office
automatic ["OA"] equipment (e.g., copying machines) that comprise the
fluorine-containing conductive agent Li-OTs, which is said to provide stable
conductivity to component parts made of polyurethane. (Id. at i-f 7, citing
Takahiko [0001] and [0013]-[0014].) The Examiner finds further that
Takahiko teaches that the Li-OTs is "included as conductive fillers, and the
desired conductivity is not due to any chemical reaction expected to occur
between the fluorine-containing ion conductive agent and the base resin."
(Id. at 5, i-f 11, citing Takahiko [0018].)
Nakajima urges that "Takahiko does not disclose, or even suggest,
that lithium trifluoromethanesulfonate is combined with a fluororesin"
(Br. 5, 11. 13-14), and that "it is understood that fluororesin is particularly
different from polyurethane in terms of chemical properties and physical
properties" (id. at 11. 14--15)
9 Trifluoromethanesulfonate, F3C-S03-, is commonly referred to as
"triflate" and abbreviated "-OTs".
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Application 13/579,976
These arguments are not persuasive of harmful error for several
reasons. First, Takahiko teaches expressly that Li-OTs is used as a
substitute for conductive fillers such as carbon black or metal powders
(Takahiko [0003]), which are said to lead to viscosity problems.
(Id. at [0004].) The use of a substitute for particulate electrically conductive
filler in one resin would at least suggest its use in another resin, absent
indications to the contrary. Second, Nakajima does not explain what
chemical and physical properties are so different as to cast doubt on the
validity of the Examiner's finding that the conductivity is not due to
reactions expected between the Li-OTs and the resin, whether the resin is
polyurethane or fluororesin. Third, it has not escaped our notice that
Takahiko teaches that the polyol used to make the polyurethane may
comprise "a fluorine system polyol." (Takahiko [0009], last sentence.) In
this regard, we note the absence of a definition of the term "fluororesin" in
the supporting '976 Specification. 10 We shall not read limitations from
particular examples into the claims. Thus, Nakajima's argument that
Takahiko does not suggest fluororesins is not well taken.
Nakajima also urges that the differences between a molded article and
a primer further indicate that the routineer would not have consulted
Takahiko in search of ways to modify the primer layer taught by Kitajima.
(Br., para. bridging 6-7.)
10 The Specification reveals that "[t]he fluororesins constituting the surface
layer and the primer layer ( 1) may be the same or different from each other"
(Spec. 6, 11. 17-18), and that some examples are given (e.g., id. at 9, 11. 24--
27, and 10, 11. 10-12).
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Application 13/579,976
This argument is not persuasive in view of Takahiko 's teachings that
Li-OTs is useful as a substitute for conductive fillers. The teaching that the
Li-OTs would provide similar electrical conductivity properties as fillers, as
well as potentially ameliorating viscosity issues, would have provided
adequate motivation for the proposed substitution. 11
Nakajima argues that Takahiko only stresses the effect of electric
conductivity, and does not suggest that both high electrical conductivity and
high bonding force between the surface layer and another layer may be
obtained by mixing large amounts of Li-OTS to a fluororesin. (Id. at para.
bridging 5---6.)
This argument is not persuasive of harmful error because, as the
Examiner observes, "the selection of a known material based on its
suitability for its intended use supports a prima facie obviousness
determination." (Ans. 8, 11. 4--5.) Moreover, the reasons for combining
references need not be the same as the reason the inventors modified the
prior art to achieve their invention.
Nakajima does not raise distinct issues traversing the rejection of
claim 5 further in view of Ikeda.
We conclude that Nakajima has not shown harmful error in the
appealed rejections.
11 In this regard, it has not escaped our notice that Takahiko teaches that
Li-OTs is also useful as a substitute for "ion conductivity substances such as
ammonium salt and perchlorate" (Takahiko at [0003]), which are said to
lead to stability and control problems (id. at [0005]). This further indication
of compatibility would have strengthened the reasonable expectation of
successful use of Li-OTs as a conductivity additive in a primer composition.
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Application 13/579,976
C. Order
It is ORDERED that the rejection of claims 1-5 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).
AFFIRMED
7