Ex Parte Veregin et al

Patent Trial and Appeal Board

Sep 25, 2018

13917664 (P.T.A.B. Sep. 25, 2018)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE FIRST NAMED INVENTOR
13/917,664 06/14/2013 Richard PN Veregin
76113 7590 09/27/2018
PILLSBURY WINTHROP SHAW PITTMAN, LLP (Xerox)
XEROX CORPORATION
P .0 . BOX 10500
MCLEAN, VA 22102
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.
20101005US01-445215 5237
EXAMINER
REDDY, KARUNA P
ART UNIT PAPER NUMBER
1764
NOTIFICATION DATE DELIVERY MODE
09/27/2018 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):
docket_ip@pillsburylaw.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte RICHARD PN VEREGIN, QINGBIN LI,
ANDRIY KOV ALENKO, SERGEY GUSAROV,
DARYL W. VANBESIEN, and MICHAELS. HAWKINS
Appeal2017-010507
Application 13/917 ,664 1
Technology Center 1700
Before JEFFREY T. SMITH, CHRISTOPHER C. KENNEDY, and
DEBRA L. DENNETT, Administrative Patent Judges.
SMITH, Administrative Patent Judge.
DECISION ON APPEAL
1 Appellant is Xerox Corporation, identified as the real party in interest.
(App. Br. 2.)
Appeal2017-010507
Application 13/917,664
Pursuant to 35 U.S.C. § 134, Appellant seeks our review of the
Examiner's rejections of claims 1, 2, 4--6, and 8. 2, 3 We have jurisdiction.
35 U.S.C. § 6.
STATEMENT OF THE CASE
According to the Specification, Appellant's invention relates to toner
carrier compositions including a polymer coating resin consisting of a
methacrylate monomer having a hydrophobic substituent and a secondary
aminoacrylate monomer. (Spec. ,r,r 8-10.) Independent claim 1 is
illustrative of the appealed subject matter, and is reproduced below:
1. A toner carrier composition comprising:
a polymer coating resin consisting of a methacrylate
monomer having a hydrophobic substituent and a secondary
aminoacrylate monomer, wherein the highest occupied
molecular orbital (HOMO) of the methacrylate-containing
polymer has greater than about 25% of the electron density of
those molecular orbitals located on the hydrophobic substituent
and less than about 75% of the electron density of those
molecular orbitals on the carbonyl group of the methacrylate
moiety, and wherein said methacrylate monomer having a
hydrophobic substituent is present from about 98% to 100% by
weight of the polymer and said secondary aminoacrylate
monomer is present (a) from about 0.5 to about 1 %; or (b) from
about 1 to about 1.5; or ( c) from about 1.5 to about 2% by
weight of the polymer,
2 Claims 9-15 and 1 7-20 have been withdrawn from consideration and
claims 3, 7, and 16 have been canceled. (App. Br. 2.)
3 Appellant's brief does not include page numbering. We will refer to the
pages of the brief beginning with the cover page as page 1 and continuing
sequentially.
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Appeal2017-010507
Application 13/917,664
further wherein the methacrylate monomer has the
formula as set forth in formula (I):
Ar hmnuia th
wherein Ar comprises at least one aromatic group, and
the secondary amino acrylate monomer is selected from
the group consisting of dimethylaminoethyl methacrylate,
diethylaminoethyl methacrylate, and diethylaminopropyl
methacrylate; and
a carrier core particle, wherein the polymer coating resin
adheres to a surface of the carrier core particle.
On appeal, the Examiner maintains the rejection of claims 1, 2, 4--6,
and 8 rejected under 35 U.S.C. § 103 as unpatentable over the combined
teachings of Okado (US 5,512,402, issued Apr. 3 0, 1996) in view of
Mizutani (US 2009/0245858 Al, published Oct. 1, 2009).
The complete statement of the rejection appears in the Final Action.
(Final Act. 2--4.)
We limit our discussion to independent claim 1, the only independent
claim on appeal.
OPINION
The Examiner finds Okado discloses carrier particles coated with a
coating resin, and that the monomer for the coating resin may include
methacrylate monomers such as phenyl methacrylate. The Examiner
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Appeal2017-010507
Application 13/917,664
acknowledges that Okado is silent with respect to the amount of
methacrylate monomer and associated properties. (Final Act. 2-3.) The
Examiner finds Okado fails to disclose the secondary aminoacrylate
monomer. (Id. at 3.) The Examiner finds Mizutani discloses a resin coating
layer containing a copolymer that contains a nitrogen containing
(meth)acrylic ester. Mizutani teaches the content of the nitrogen containing
(meth)acrylic ester in the copolymer contained in the resin coating layer is
preferably from 0.2 mol% to 5 .0 mol%. (Mizutani ,r 16.) The Examiner
concludes it would have been obvious to prepare the polymer coating of
Okado comprising N,N-dimethylaminoethyl methacrylate in amounts of 0.5
to 2% by weight and phenyl methacrylate monomer in amounts of 98 to
99.5% by weight. (Final Act. 3.) The Examiner further concludes the
polymer composition would exhibit the same properties as claimed. (Id. at
4.)
Appellant argues Okada discloses the coating resin "must contain at
least one acrylic acid ( or acrylate) monomers and mathacrylic [sic] acid ( or
methacrylate) monomers." (App. Br. 8.) Appellant argues Okada discloses
the coating resin must comprise from 5 to 70% by weight of styrene and
does not teach the amount of methyl methacrylate present. (Id.) Appellant
further argues Okada does not disclose a secondary amino acrylate
monomer. (Id.) Appellant argues Mizutani discloses a resin coating layer
that contains a copolymer that contains an alicyclic acrylic ester or alicyclic
methacrylic ester that is not the same as the claimed methacrylate monomer
of formula (I), and is not the same as the styrene monomer or the phenyl
methacrylate monomer taught in Okado. (Id. at 8-9.)
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Appeal2017-010507
Application 13/917,664
The claimed invention specifies the polymer coating resin consists of
two components specifically methacrylate monomer of formula (I) and the
secondary amino acrylate monomer selected from the group consisting of
dimethylaminoethyl methacrylate, diethylaminoethyl methacrylate, and
diethylaminopropyl methacrylate. We agree with Appellant that Okado does
not teach the methacrylate monomer of formula (I) and the secondary amino
acrylate monomer in the amount required by the claimed invention. The
Examiner states "Mizutani is only used for its teaching that inclusion of
secondary aminoacrylate monomers in a carrier coating resin, provides for
improved properties, such as better adhesion." (Ans. 6.) The Examiner has
not identified specific portions of Okado that teach the polymer coating resin
contains only two components and the methacrylate monomer of formula (I)
is present from about 98% to 100% by weight of the polymer as required by
the claimed invention. The Examiner's reasoning (Ans. 8) that Okado's
requirement for the coating resin to contain at least one monomer selected
from at least (meth)acrylate monomers in amounts of 100% by weight is not
suggestive of including an additional monomer component not specified by
the reference (i.e., aminoacrylate monomers). Consequently, the Examiner
has not adequately explained how Okado would have suggested the polymer
coating resin composed of two components in the amounts required by the
claimed invention. Furthermore, the Examiner acknowledges that Okado
teaches an embodiment where the polymer resin composition to contain 5 to
70% by weight of styrene. (Ans. 6.) In these embodiments even if the
teachings of Okado and Mizutani were combined as suggested by the
Examiner, the resulting polymer composition would contain a third
component which is excluded by the "consisting of' claim language.
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Appeal2017-010507
Application 13/917,664
For the foregoing reasons we reverse the rejection of claims 1, 2, 4--6,
and 8 under 35 U.S.C. § 103 as unpatentable over the combined teachings of
Okado and Mizutani.
DECISION
The appealed rejection of claims 1, 2, 4--6, and 8 is reversed
REVERSED
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