Ex parte ONO

Board of Patent Appeals and Interferences

Nov 14, 2000

08325566 (B.P.A.I. Nov. 14, 2000)

Application for patent filed on October 19, 1994. The real party in interest is Fuji Xerox1
Company, Ltd.
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not binding precedent of the Board.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. 23
UNITED STATES PATENT AND TRADEMARK OFFICE
____________
BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
____________
Ex parte MASATO ONO
____________
Appeal No. 1997-1592
Application No. 08/325,5661
____________
HEARD: October 12, 2000
____________
Before GARRIS, LIEBERMAN, and TIERNEY, Administrative Patent Judges.
TIERNEY, Administrative Patent Judge.
Decision on Appeal
This is an appeal under 35 U.S.C. §134 from the examiner’s refusal to allow
claims 5, 6 and 8-13. We reverse.
The Invention
The invention relates to a charging member for an electrophotographic apparatus.
(Specification, p. 1). As described in appellant’s specification, “an electrically conductive member to
Appeal No. 1997-1592
Application No. 08/325,566
2
be incorporated in a charging member for charging an electrophotographic photoreceptor is required to
exhibit an electrical conductivity of 10 to 10 [ohms] as calculated in terms of resistivity.” 3 9
(Specification, p. 1).
In general, a conductive member is provided on a metallic shaft and its external surface acts an
electrically conductive layer. (Specification, p. 1). For example, the charging member can be charged
and brought into contact with a drum-shaped photoreceptor such that the surface of photoreceptor
becomes uniformly charged. (Specification, pages 7-8 and Fig. 3). A latent image may then be formed
on the surface of the photoreceptor and this latent image may be developed by a means of
development. (Specification, p. 8).
A copy of the claims under appeal is set forth in the appendix to the Appellant’s Brief.
Independent claim 5 is illustrative of the invention and reads as follows:
5. An electrophotographic charging member, which comprises a porous
anodized aluminum film formed by anodically oxidizing a support the surface of which
comprises aluminum or aluminum alloy and a surface protective layer on the surface of
said porous anodized aluminum film, said surface protective layer having dispersed
therein electrically conductive fine particles having a particle size of not greater than 5
Fm.
The References
The prior art references of record relied upon by the examiner and the appellant’s are:
Aizawa et al. (Aizawa) 4,430,410 Feb. 7, 1984
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Kirk-Othmer Encyclopedia of Chemical Technology, 3rd ed., Vol. 4, John Wiley & Sons, Inc., 1978,
pp. 631-666.
Van Nostrand Reinhold’s Scientific Encyclopedia, 6th ed., 1983, p. 523.
Aizawa, the Kirk-Othmer Encyclopedia and the Van Nostrand Encyclopedia are available as
prior art under 35 U.S.C. § 102(b).
References Cited by the Board of Patent Appeals and Interferences
The references cited by the Board are as follows:
Pengilly (‘004) 4,408,004 Oct. 4, 1983
Pengilly (‘272) 4,476,272 Oct. 9, 1984
Pengilly (‘118) 4,535,118 Aug. 13, 1985
Hirayama et al. (Hirayama) 5,782,968 Jul. 21, 1998
The Pengilly ‘004, ‘272 and ‘118 patents are available as prior art under 35 U.S.C. §102(b).
Hirayama, which issued from a U.S. application filed on Dec. 4, 1996, is not available as prior art. The
Pengilly patents and Hirayama are made of record and are cited on the attached PTO-892.
The Rejection
(1) Claims 5, 6 and 8-13 stand rejected under 35 U.S.C. § 103(a) as unpatentable over
Aizawa.
The Aizawa Reference
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Aizawa describes a method and apparatus for developing latent electrostatic images formed on
the surface of an image bearing material. (Abstract). In particular, the method involves magnetically
retaining a relatively conductive one-component developer on the surface of a developer-retaining
member and contacting the developer with the surface of an image-bearing material which has formed
thereon a latent electrostatic image. (Col. 4, lines 19-29). The developer-retaining member is formed
of a stationary sleeve disposed so that its surface approaches the surface of a photosensitive material in
a developing zone. (Col. 5, lines 27-30 and Fig. 1). Aizawa describes the resistance of the developer-
retaining member as preferably ranging from 5 x 10 ohms to 5 x 10 ohms. (Col. 6, lines 34-42 and7 8
col. 9, lines 25-30). This resistance can be achieved by forming a synthetic resin surface layer
containing carbon black particles dispersed therein on an insulating coating of the sleeve or by forming
the synthetic resin layer directly on the conductive main body of the sleeve. (Col. 9, lines 30-35).
In example 1 of Aizawa, five sleeves were provided each of which consisted of a main body of
aluminum and an aluminum oxide layer formed on the main body by anodization.
(Col. 9, lines 53-55). The surface of each of the sleeves was uniformly coated with a viscous
composition which comprised carbon black powder (“Special Black No. 4,” a product of DeGussa
Corporation), an oil-soluble dye, tetrahydrofuran and a vinyl chloride copolymer.
Appeal No. 1997-1592
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(Col. 9, line 55 to col. 10, line 20). These sleeves were then used as developer-retaining members in a
developing device. (Col. 10, lines 39-45). Of note, sleeves 2, 3 and 4 had resistances ranging from 1
x 10 to 1 x 10 ohms. (Col. 10, table 1).7 9
Opinion
The examiner has rejected claims 5, 6 and 8-13 under 35 U.S.C. § 103(a) as unpatentable
over Aizawa. The examiner cites Aizawa as disclosing a structure comprising a main body of
aluminum, an aluminum oxide layer formed by anodization of the main body and a surface layer of a
synthetic resin having carbon black dispersed therein. (Examiner’s Answer, p. 4). According to the
examiner, the porosity of the anodized layer is inherent in the Aizawa structure as aluminum oxide layers
formed by anodization are porous unless the layer is further treated to seal the pores. (Examiner’s
Answer, p. 4).
The examiner recognizes that Aizawa does not explicitly disclose the particle size of the carbon
particles in the surface layer. Yet, the examiner concludes that absent a showing of criticality for this
size limitation, the particle size would have been within the general skill of a worker in the art at the time
of the invention to determine usable and optimum sizes for the particles dispersed in the surface layer.
(Examiner’s Answer, p. 4). Furthermore, the examiner cites Kirk-Othmer as disclosing average
particle diameters for carbon black of less than 5 Fm. (Examiner’s Answer, p. 6).
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Appellant contends that a person skilled in the art reading the Aizawa reference would not have
been taught what the size of the individual grains of carbon black ought to be. (Appellant’s Brief, p. 5).
Furthermore, appellant cites Van Nostrand as disclosing that carbon black for commercial applications
has a particle size ranging from 100 to 5,000 Fm. (Appellant’s Brief, p. 5).
The examiner has failed to establish that the Aizawa reference renders obvious appellant’s
claimed charging member having a surface protective layer containing electrically conductive fine
particles having a particle size of not greater than 5 Fm. As noted by appellant, Aizawa is silent as to
carbon black particle size. Yet, it is well settled that to establish a prima facie case of obviousness the
prior art reference (or references when combined) must teach or suggest all the claim limitations. Any
motivation to modify the prior art references must flow from some teaching in the art that suggests the
desirability or incentive to make the modification needed to arrive at the claimed invention. In re
Napier, 55 F.3d 610, 613, 34 USPQ2d 1782, 1784 (Fed Cir. 1995). The examiner, however, has
failed to demonstrate that one skilled in the art would be motivated to employ carbon particles having a
particle size of not greater than 5 Fm in the developer-retaining member sleeves of Aizawa.
The examiner’s reliance on the Kirk-Othmer Encyclopedia fails to establish that the one skilled
in the art would desire appellant’s claimed 5 Fm or less particle size for Aizawa’s carbon black.
Specifically, Kirk-Othmer states that “carbon blacks differ in particle size or surface area, average
aggregate mass, particle and aggregate mass distributions, morphology or structure, and chemical
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composition.” (Kirk-Othmer, Vol. 4, p. 636, emphasis added). Moreover, Kirk-Othmer does not
teach or suggest that carbon blacks produced by any known process will inherently have a particle size
of 5 Fm or less. Furthermore, Kirk-Othmer does not teach or suggest that carbon blacks for coating a
developer-retaining member sleeve, such as that described by Aizawa, will have a particular particle
size, let alone the claimed 5 Fm or less particle size. Accordingly, the examiner has failed to establish
that Aizawa, alone or in combination with Kirk-Othmer would have motivated one skilled in the art to
select the claimed 5 Fm or less particle size for Aizawa’s carbon black.
Observation
We reverse the examiner’s rejection of claims 5, 6 and 8-13 as unpatentable over Aizawa as
the examiner has failed to demonstrate that Aizawa, alone or in view of Kirk-Othmer, suggests the use
of a carbon black having a particle size of 5 Fm or less. As discussed above, Aizawa does not recite a
particle size for the carbon black particles dispersed in the synthetic resin surface layer. Aizawa does,
however, describe and exemplify the use of “Special Black No. 4" a carbon black powder which is a
product of DeGussa. (Aizawa, col. 10, lines 10-11).
The Pengilly ‘004, ‘272 and ‘118 patents describe polyesters having improved infrared light
absorption capacity which is obtained by the incorporation of carbon black. (‘004, col. 1, lines 6-9,
‘272, col. 1, lines 10-12 and ‘118, col. 1, lines 11-13). The Pengilly patents describe DeGussa
Appeal No. 1997-1592
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Additionally, Hirayama, which is not prior art, also describes DeGussa Special Black #4 as2
having an average particle size of 0.025Fm. (Hirayama, col. 17, lines 24-26).
8
Special Black #4 as having an average particle size of 25 nanometers, i.e., 0.025 Fm. (‘004, col. 6,
lines 66-68, ‘272, col. 7, lines 4-6 and ‘118, col. 6, lines 66-68). 2
One skilled in the art reading Aizawa, and armed with the fact that Special Black No. 4 from
DeGussa had a particle size of 0.025 Fm, would have understood Aizawa’s developer-retaining
member sleeves of examples 1 to contain: 1) a main body of aluminum and an aluminum oxide layer
formed by anodization; and 2) a viscous composition applied to the surface having: a) a vinyl chloride
copolymer; and b) a carbon black having an average particle size of 0.025 Fm. Additionally, Aizawa
describes sleeves 2, 3 and 4 as having resistances ranging from 1 x 10 to 1 x 10 ohms. (Col. 10,7 9
table 1).
Appellant’s independent claim 5 contains the preamble “an electrophotographic charging
member.” The terms appearing in a preamble may be deemed a limitation of a claim where the
preamble gives meaning to the claim and properly define the invention. Although no litmus test exists as
to what effect should be accorded to words contained in a preamble, a review of the specification in its
entirety should be made to determine whether appellant intended such language to represent an
additional structural limitation or mere introductory language. In re Paulsen, 30 F.3d 1475, 1479, 31
USPQ.2d 1671, 1673 (Fed. Cir. 1994).
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In the event of further prosecution, the examiner should consider the structural limitations
introduced by appellant’s “an electrophotographic charging member” preamble. For example, our
review of the specification indicates that an electrically conductive member to be incorporated in a
charging member for charging an electrophotographic photoreceptor is required to exhibit electrical
conductivity of 10 to 10 ohms as calculated in terms of resistivity. (Appellant’s specification, p. 1). 3 9
While such a limitation appears to be met by Aizawa’s exemplified sleeves 2, 3 and 4, the examiner and
appellant should clarify for the record what, if any, additional structural differences are required by the
preamble terminology “an electrophotographic charging member.” Further, the examiner should make
appropriate findings as to the anodized aluminum sleeves of Aizawa. If no structural differences are
found between Aizawa’s sleeves and the claimed “electrophotographic charging members” and it is
determined that Aizawa’s sleeves are capable of performing as “electrophotographic charging
members,” the examiner should consider making a new ground of rejection over Aizawa citing the
Special Black #4 description contained in the Pengilly ‘004, ‘272 and ‘118 patents.
Conclusion
The decision of the examiner to reject claims 5, 6 and 8-13 stand under 35 U.S.C.
§ 103(a) as unpatentable over Aizawa is reversed.
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Application No. 08/325,566
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REVERSED
BRADLEY R. GARRIS )
Administrative Patent Judge )
)
)
)
) BOARD OF PATENT
PAUL LIEBERMAN ) APPEALS
Administrative Patent Judge ) AND
) INTERFERENCES
)
)
)
MICHAEL P. TIERNEY )
Administrative Patent Judge )
MPT/sld
Appeal No. 1997-1592
Application No. 08/325,566
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JAMES A. OLIFF
OLIFF & BERRIDGE
P.O. BOX 19928
ALEXANDRIA, VA 22320
Shereece
Appeal No. 1997-1592
Application No. 08/325,566
APJ TIERNEY
APJ
APJ KEYBOARD()

Prepared: August 24, 2001