13809279 (P.T.A.B. Jan. 19, 2018)

Ex Parte Takeda et al

Patent Trial and Appeal BoardJan 19, 2018

13809279 (P.T.A.B. Jan. 19, 2018)

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. 13/809,279 01/09/2013 Kazutoshi Takeda 1551-0226PUS1 5902 127226 7590 01/23/2018 BIRCH, STEWART, KOLASCH & BIRCH, LLP 8110 Gatehouse Road Suite 100 East Falls Church, VA 22042-1248 EXAMINER FUNG, CHING-YIU ART UNIT PAPER NUMBER 1787 NOTIFICATION DATE DELIVERY MODE 01/23/2018 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): mailroom @ bskb. com PTOL-90A (Rev. 04/07) UNITED STATES PATENT AND TRADEMARK OFFICE BEFORE THE PATENT TRIAL AND APPEAL BOARD Ex parte KAZUTOSHI TAKEDA, KENJI KOSUGE, TATSUYA TAKASE, and KOHJI MUNEDA Appeal 2016-005494 Application 13/809,279 Technology Center 1700 Before ADRIENE LEPIANE HANLON, BEVERLY A. FRANKLIN, and KAREN M. HASTINGS, Administrative Patent Judges. HANLON, Administrative Patent Judge. DECISION ON APPEAL A. STATEMENT OF THE CASE The Appellants filed an appeal under 35 U.S.C. § 134 from an Examiner’s decision finally rejecting claim 1 under 35 U.S.C. § 103(a) as unpatentable over Appeal 2016-005494 Application 13/809,279 Takeda et al.1 in view of Nukada et al.2 and PBS.3 Claims 2 and 4—10 are also pending but have been withdrawn from consideration. A hearing was held on January 11, 2018. We have jurisdiction under 35 U.S.C. § 6(b). We AFFIRM. Claim 1 is reproduced below from the Claims Appendix of the Appeal Brief dated September 30, 2015 (“Br.”). The limitation at issue is italicized. 1. An electrical steel sheet, comprising: a base iron; and an insulating film formed on a surface of the base iron, wherein the insulating film contains: a first component: 100 parts by mass, the first component containing: a metal phosphate: 100 parts by mass; and one or more selected from the group consisting of an acrylic resin, an epoxy resin and a polyester resin which have an average particle size of 0.05 pm to 0.50 pm; 1 part by mass to 50 parts by mass; and a second component composed of dispersion or powder of a fluorine resin having an average particle size of 0.05 pm to 0.35 pm: 0.5 parts by mass to 10 parts by mass. Br., Claims Appendix 1. 1 WO 2010/061722, dated June 3, 2010 (“Takeda”). The Examiner relies on US 2011/0212335 Al, published September 1, 2011, as an English language equivalent of WO 2010/061722. Final Office Action dated April 15, 2015 (“Final”), at 3. The Appellants do not object. 2 US 2006/0014092 Al, published January 19, 2006 (“Nukada”). 3 The Elements of Steel, http ://www.pb s. org/wgbh/americanexperience/ features/general- article/streamliners-steel/ (“PBS”). 2 Appeal 2016-005494 Application 13/809,279 The Appellants disclose that the second component may be, for example, polytetrafluoroethylene. Spec. 137. B. DISCUSSION The Examiner finds, and the Appellants do not dispute, that Takeda discloses an electrical steel sheet comprising a steel strip corresponding to the claimed base iron and an insulating film corresponding to the claimed first component. Ans. 2—3.4 The Examiner finds Takeda does not disclose the claimed second component, and thus turns to Nukada. Ans. 3. The Examiner finds Nukada discloses an electrophotographic photoreceptor comprising, inter alia, charge transport layer 32 as a surface layer on a conductive sheet, such as iron. Ans. 3, 7 (citing Nukada H 41, 42). The Examiner finds the charge transport layer comprises a resin capable of forming an electroinsulating film (i.e., an insulating resin) and lubricating particles, such as fluorinated resin particles. Ans. 3 (citing Nukada 116—117, 120). The Examiner concludes that it would have been obvious to one of ordinary skill in the art to add Nukada’s fluorinated resin particles to Takeda’s insulating film to perform the known function of lubricating or reducing friction. Ans. 4—5. The Appellants argue that “Nukada is not analogous art to the present invention.” Br. 6. For that reason, the Appellants argue that the rejection on appeal should be reversed. The Appellants argue: [T]he test for determining whether a reference is analogous art to a claimed invention comprises two prongs: (1) Is the reference from the same field of endeavor as the claimed invention (even if it addresses a different problem)? — or — 4 Examiner’s Answer dated March 2, 2016. 3 Appeal 2016-005494 Application 13/809,279 (2) Is the reference reasonably pertinent to the particular problem faced by the inventor (even if it is not in the same field of endeavor as the claimed invention)? Br. 7 (original emphasis omitted). The Appellants argue that “Nukada fails both prongs of the test above.” Br. 8. As for the first prong, the Appellants argue that “[t]he claimed invention is directed to ‘an electrical steel sheet suitable for a material of an iron core of an electric equipment,’” such a motor and/or a transformer. Br. 8 (emphasis added). In contrast, the Appellants argue that Nukada is directed to an electrophotographic photoreceptor that is employed in an electrophotographic apparatus, such as a copying machine or a laser beam printer. Br. 8. In response, the Examiner notes that claim 1 is broadly drawn to “an electrical steel sheet” and does not recite an electrical steel sheet “suitable for a material of an iron core of an electric equipment” as the Appellants contend or recite “a motor and/or a transformer.” Ans. 6. The Examiner’s observation is supported by the record. As for the second prong, the Appellants argue that “the ‘particular problem faced by the inventor’ is to improve the characteristics of an insulating film, and to improve the quality of the adhesiveness between the insulating film and the molding resin, so as to achieve high removability of the molding resin while maintaining high insulation performance.” Br. 10-11 (emphasis added). The Appellants argue that Nukada is not in any way reasonably pertinent to that problem. Br. 11. In particular, the Appellants argue that the fluorinated lubricating particles in Nukada’s charge transport layer 32 are described as “providing a lubricating property thereby retarding abrasion of the surface layer or 4 Appeal 2016-005494 Application 13/809,279 avoiding scratches, and improving a cleaning property for a developer deposited on the surface of the photoreceptor.” Br. 12 (emphasis omitted). The Examiner explains that “[i]n order for a reference to be ‘reasonably pertinent’ to the problem, it must ‘logically [] have commended itself to an inventor’s attention in considering his problem[]’ and not that the prior art solves the same problem.” Ans. 8 (quoting MPEP § 2141.01(a)(1)). According to the Appellants, the problem faced by the inventors is improving the characteristics of an insulating film and the quality of adhesiveness between the insulating film and a molding resin. Br. 10—11. The Appellants are said to have solved the problem by using an insulating film comprising a metal phosphate and a resin selected from the group consisting of an acrylic resin, an epoxy resin, and a polyester resin (i.e., claimed first component) and a dispersion or powder of a fluorine resin such as polytetrafluoroethylene (i.e., claimed second component). Spec. Tflf 9, 37. Nukada discloses that charge transport layer 32 comprises an insulating resin and lubricating particles. Nukada Tflf 116, 120; see also Ans. 7 (citing Nukada Tflf 116, 120). Exemplary insulating resins are said to include a polyester resin and an acrylic resin, and exemplary lubricating particles are said to include fluorinated resin particles such as polytetrafluoroethylene. Nukada 117, 120; see also Ans. 7 (citing Nukada ]Hf 117, 120). We find that Nukada would have logically commended itself to the inventors’ attention because Nukada’s charge transport layer reduces friction (i.e., lubricates) and provides insulating properties, which are two areas of interest in the problem faced by the inventors. See Ans. 8—9. Based on the foregoing, a preponderance of the evidence of record supports the Examiner’s finding that Nukada is analogous art. Therefore, the § 103(a) rejection is sustained. 5 Appeal 2016-005494 Application 13/809,279 C. DECISION The Examiner’s decision 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)(1). AFFIRMED 6