Ex Parte WADA et al

Patent Trial and Appeal Board

Jul 6, 2017

13933918 (P.T.A.B. Jul. 6, 2017)

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.
13/933,918 07/02/2013 Mitsuo WADA 418229US99DIV 1009
22850 7590 07/10/2017
OBLON, MCCLELLAND, MAIER & NEUSTADT, L.L.P.
1940 DUKE STREET
ALEXANDRIA, VA 22314
EXAMINER
RODEE, CHRISTOPHER D
ART UNIT PAPER NUMBER
1721
NOTIFICATION DATE DELIVERY MODE
07/10/2017 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):
patentdocket @ oblon. com
oblonpat @ oblon. com
tfarrell@oblon.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte MITSUO WAD A, TERUYUKI MITSUMORI, HIROAKI
TAKAMURA, MASAYA OOTA, TERUKI SENOKUCHI, SHIHO SANO,
MASAKAZU SUGIHARA, SHIRO YASUTOMI, YUMI HIRABARU,
and TAKESHI OOWADA
Appeal 2016-004016
Application 13/933,9181
Technology Center 1700
Before JEFFREY T. SMITH, WESLEY B. DERRICK, and
JULIA HEANEY, Administrative Patent Judges.
DERRICK, Administrative Patent Judge.
DECISION ON APPEAL
STATEMENT OF THE CASE
Appellants appeal under 35 U.S.C. § 134 from the Examiner’s
decision rejecting claims 2-12. We have jurisdiction under 35 U.S.C. § 6.
We AFFIRM.
1 Mitsubishi Chemical Corporation is identified as the real party in interest.
Appeal Br. 2.
Appeal 2016-004016
Application 13/933,918
THE INVENTION
The subject matter of the claims on appeal relates to an image forming
apparatus that includes an electrophotographic photoreceptor and a toner.
Specification (“Spec.”), Abstract.
Claim 2—the sole independent claim—is representative.
A method comprising electrostatically charging an
electrophotographic photoreceptor, exposing the
electrostatically charged electrophotographic photoreceptor to
form a latent image, developing the latent image with an
electrostatic charge image-developing toner, and transferring
the developed image to a recording paper, said method being
carried out in an apparatus comprising an electrophotographic
photoreceptor comprising a photosensitive layer on an
electroconductive support, the photosensitive layer comprising
a charge-generating layer and a charge-transporting layer,
wherein the charge-generating layer comprises oxytitanium
phthalocyanine showing at least main diffraction peaks at
Bragg angles (20 + 0.2°) of 9.0° and 27.2° and at least one main
diffraction peak in the range of 9.3° to 9.8° to CuKa
characteristic X-rays (wavelength: 1.541 angstroms), and the
electrostatic charge image-developing toner satisfies following
requirements (1) to (4):
(1) the volume median diameter (Dv50) is 5.0 pm or
more and 7.0 pm or less,
(2) the average sphericity is 0.93 or more and 0.965 or
less,
(3) the volume median diameter (Dv50) of the toner
and a content (% by number: Dns) of toner particles having a
particle diameter of 2.00 pm or more and 3.56 pm or less
satisfy Dns < 0.233EXP(17.3/Dv50), and
(4) the number variation coefficient is 22.0 % or less.
Appeal Brief filed September 23, 2015 (“Appeal Br.”) (Claims App.), 22.
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THE REJECTIONS2
The claims stand rejected under 35 U.S.C. § 103(a) as follows:
1. Claims 2-5, 7, and 9-12 over Gaims3 in view of Diamond,4
Emoto,5 Xu,6 and Takada7;
2. Claim 6 over Gaims in view of Diamond, Emoto, Xu, Takada,
and Yamane8; and
3. Claim 8 over Gaims in view of Diamond, Emoto, Xu, Takada,
and Matsuda.9
DISCUSSION
We have reviewed the grounds of rejection set forth by the Examiner,
Appellants’ arguments and proffered evidence, and the Examiner’s response.
On this record, we are unpersuaded that the Examiner erred reversibly and
we determine that a preponderance of the evidence supports the Examiner’s
conclusion of obviousness.
Appellants argue the patentability of the claims as a group on the basis
of independent claim 2, contending that the Examiner has failed to establish
a prima facie case of obviousness and, even if a prima facie case were made,
2 See Final Office Action issued February 25, 2015 (“Final Act.”), 2-3.
3 Gaims et al., WO 99/45074, published September 10, 1999. Appellants
refer to this same reference citing the second named inventor Stephenson.
Appeal Br. 8-9.
4 Diamond et al. (eds.), Handbook of Imaging Materials (2nd Ed.) (copyright
2002) pp. 145-64.
5 Emoto et al., US 2004/0053155 Al, published March 18, 2004.
6 Xu et al., US 2003/0003387 Al, published January 2, 2003.
7 Takada et al., US 7,212,777 B2, issued May 1, 2007.
8 Yamane et al., US 2006/0216621 Al, published September 28, 2006.
9 Matsuda et al., US 2003/0104297 Al, published June 5, 2003.
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Application 13/933,918
that unexpected results demonstrate the non-obviousness of the appealed
claims. Appellants separately contend the patentability of each of claims 3,
4, 8, 9, and 10.
The Prima Facie Case
The Examiner relies on Gaims for its disclosure relating to an
apparatus for electroreprography including a photoconductive member and
its operation for most recited limitations pertaining to the required apparatus,
including a titanylphthalocyanine charge generation material. Examiner’s
Answer issued January 11, 2016 (“Ans.”), 2-3 (citing Gaims, 1,11. 1-12,
33-37; 2,11. 25-28; 4,11. 14-29, 5,11. 7-22).
Noting that Gaims does not specify the apparatus as including a
development device comprising a development tank for development toner,
the Examiner relies on Diamond for its disclosure of the conventional
constmction of an imaging apparatus as including a development system
comprising a tank filled with developer, comprising a toner and a carrier.
Ans. 3 (citing Diamond, Section 4.2; Figs. 4.2, 4.9).
The Examiner finds both Gaims and Diamond disclose the use of
toner to develop the image formed on the photoreceptor, but fail to disclose
the particular toner claimed. Ans. 3.
As to the recited requirements for the toner, the Examiner relies on the
teachings of Emoto, Xu, and Takada. Ans. 3-6.
The Examiner finds Emoto discloses a toner for electrostatic images
having a narrow particle size and controlled sphericity, including examples
from Table 2 having volume average particle diameter of from 4.9 pm to
6.9 pm and sphericity of from 0.93 to 0.955, as well as disclosing that “[t]he
average sphericity of the toner according to the present invention is 0.900 to
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0.960.” Ans. 3—4; Emoto 57, 152. The Examiner further finds “[t]hese
values fall within or overlap substantially with requirements (1) and (2) of
the instant claims.” Ans. 4.
The Examiner further finds Emoto’s disclosed toners “have a narrow
particle size distribution (Dv/Dn) of from 1.00 to 1.20” and “preferably 1.1
to 1.17” where Dv is the volume average particle diameter and Dn is the
number average particle diameter and that Emoto teaches the narrow particle
size distribution “provides high resolution and high image quality to the
developed image.” Ans. 4 (citing Emoto Tflf 45, 152 (Table 2)).
Regarding the Dv/Dn ratio, the Examiner relies on Xu for its teaching
“that when Dv/Dn is 1 all toner particles have the same size.” Ans. 4 (citing
Xu, 1120). Xu also states that “[t]he minimum value of DV/DN is 1.” Xu
1120. Xu also teaches, similarly to Emoto, that a narrow size distribution is
preferred in teaching that “a toner with a DV/DN value of 1 is advantageous
for forming images with a high resolution.” Xu | 120.
The Examiner finds Takada likewise teaches the same Dv/Dn ratio as
an expression of particle size distribution and also teaches that narrowing the
particle size distribution provides for better quality images because of
increased uniformity in the amount of charge. Ans. 4 (citing Takada, col. 8,
11. 22-50).
The Examiner further finds that “[t]he cumulative teachings of Emoto
clearly show that the toner particle average size [Dv50], shape [sphericity]
and breadth of toner size distribution [Dv/Dn] are result affecting.” Ans. 4.
In relation to the toner particle size range, the Examiner also finds Emoto
teaches minimizing the number of particles having a diameter of less than
3 pm (Ans. 4), which would a priori reduce the toner size distribution
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because it would eliminate particles varying from the average particle size
(Ans. 5-6). In sum, the Examiner finds, inter alia, that both the breadth of
toner size distribution [Dv/Dn] and the number of smaller toner particles
were recognized as result effective variables for the quality of printing.
As to requirement (3) of claim 2, as highlighted by the Examiner’s
calculations, it merely expresses an upper limit for the number of toner
particles in the size range of from 2.00 pm to 3.56 pm as a function of the
volume average particle diameter (Dv50). Ans. 5.
In setting forth that “the artisan would seek to narrow the particle size
distribution” and that in doing so “the artisan would have optimized the
particular amounts,” the Examiner de facto determines that the skilled
artisan would have arrived at the claimed invention through no more than
routine experimentation. Ans. 5-6.
As to requirement (4) of claim 2, as highlighted by the Examiner, the
“number variation coefficient” merely expresses an upper limit for the
variation of toner particles in respect to size. Ans. 6.
The Examiner, inter alia, finds Emoto teaches the desirability of a
narrow breadth of toner diameters and that it is a result effective variable.
Ans. 6. The Examiner determines that the recited number variation
coefficient is met through no more than routine optimization as minimizing
the breadth of toner diameters likewise reduces the number variation
coefficient. Ans. 6.
The Examiner concludes that one of ordinary skill in the art at the
time of the invention would have found it obvious to use the toner of Emoto
in the apparatus of Gaims as modified by Diamond for the benefit of
providing, inter alia, high quality images. Ans. 6—7.
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In a general discussion of advantages of the invention (Appeal Br. 4-
8), Appellants contend “that obtaining an image preferable in fogging and
memory requires the combination (matching) of a particular oxytitanium
phthalocyanine with a particular toner having a relatively lower average
sphericity but in a limited range” (Appeal Br. 8).
In the argument against the rejection, Appellants contend that none of
the references cited disclose a toner satisfying requirements (3) and (4) of
claim 2. Appeal Br. 10. Appellants further contend that “[t]he Examiner
does not dispute that a toner satisfying both requirements (3) and (4) is not
known to exist.” Appeal Br. 11.
Appellants argue that the cited prior art does not disclose or suggest
carrying out particular steps to produce toner in the particular manner that is
discussed in the Specification as being able to provide toner particles
meeting both requirements (3) and (4). Appeal Br. 10-11 (citing Spec.
1151, 115, 128,385,406).
On this record, Appellants’ argument is unpersuasive both because the
claim does not require that the toner be produced in any particular manner
and because it fails to “take account of the inferences and creative steps that
a person of ordinary skill in the art would employ” in overcoming the
difficulties within their level of skill. KSR Int’l Co. v. Teleflex Inc., 550 U.S.
398, 418 (2007); see also id. at 421 (“A person of ordinary skill is also a
person of ordinary creativity, not an automaton.”). As to paragraph 51 of the
Specification relating to “conventional toners” and difficulties in meeting the
specified requirements, we find it insufficient absent persuasive argument or
evidence that overcoming these is beyond the ambit of one of ordinary skill,
or, further, even a contention by Appellants that the toner of Emoto is a
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“conventional toner” such that the difficulties would be expected in
modifying Emoto.
As to requirement (3), Appellants argue that the Emoto fails to
consider large particles and, as to small particles, teaches minimizing
particles within a different size range—having a diameter less than 3 pm—
rather than the recited range of 2.00 pm to 3.56 pm. Appeal Br. 11-12, 15-
16. Appellants further argue that Emoto fails to suggest any relationship
between the amount of fine particles based on the average particle diameter
as expressed in requirement (3). Appeal Br. 12. Appellants further contend
that the Examiner’s finding that Emoto reasonably suggests minimization of
small particle diameter toners and minimizing the breadth of particle
distribution is clearly erroneous because of Emoto’s focus on minimizing the
number of toner particles in a different range of particle diameter. Appeal
Br. 13.
On this record, Appellants’ arguments are unpersuasive because the
rejection is grounded on the prior art teaching the desirability of a narrow
breadth of toner diameters—a recognized result effective variable—that
would lead the skilled artisan to minimize the numbers of particles of both
smaller and larger size than the average particle diameter and thus lead them
to the claimed subject matter through no more than routine optimization.
As to requirement (4), Appellants contend that the disclosure of a ratio
Dv/Dn of between 1.00 and 1.2 suggests nothing about the requirement (4).
Appeal Br. 13 (citing Spec. 1373). Appellants further cite to paragraph 51
of the Specification and then contend again that “Emoto neither discloses
nor suggests a method of obtaining a toner that satisfies all requirements of
the present claims.” Appeal Br. 13-14 (citing Spec. ^ 51, 115, 128).
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Appellants summarize the Examiner’s reliance on Xu and Takada.10 Appeal
Br. 14-15.
On this record, we are not persuaded of reversible error. In particular,
we discern no cogent argument contesting the Examiner’s detailed
determination that minimizing the value of Dv/Dn, particularly toward its
lower bound of 1.00, would concomitantly lead to satisfying requirement
(4). Cf. In re Lovin, 652 F.3d 1349, 1357 (Fed. Cir. 2011) (“[W]e hold that
the Board reasonably interpreted Rule 41.37 to require more substantive
arguments in an appeal brief than a mere recitation of the claim elements and
a naked assertion that the corresponding elements were not found in the
prior art. Because Lovin did not provide such arguments, the Board did not
err in refusing to separately address claims 2—15, 17—24, and 31—34.”).
As to Appellants’ contention that Emoto fails to disclose or suggest a
method that satisfies all requirements of the present claims, we no discern no
persuasive merit because the claims are not limited to particular methods.
Further, prior art references are presumed enabled, In re Antor Media Corp.,
689 F.3d 1282, 1289 (Fed. Cir. 2012), and Emoto discloses in its range of
preferred Dv/Dn ratios of “1.00 > Dv/Dn < 1.15” a Dv/Dn ratio of 1.00
(Emoto 145) that clearly meets requirements (3) and (4) and there is no
persuasive evidence on this record that Emoto does not provide the
necessary teaching for the skilled artisan to meet requirements (3) and (4)
while also providing the required sphericity of requirement (2).
10 We discern no cogent argument of any error in the discussion of Xu and
Takada.
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In the Reply Brief, Appellants further discuss the advantages of the
instant invention, emphasizing the concept of matching the toner and
photoreceptor. Reply Brief filed March 11, 2016 (“Reply Br.”), 2—4.
On this record, we discern no persuasive argument that the Examiner
erred reversibly in concluding the claims were prima facie obvious because
it fails to identify in the fact finding and conclusions that the Examiner did
rely on. See generally Ans.
Appellants also further contend that the toners of Emoto would not
satisfy the limitations of claim 2 because they would not have enabled a
person of ordinary skill in the relevant art to produce a toner simultaneously
satisfying requirements (1) to (4). Reply Br. 6 (citing Appeal Br. 10,1. 21-
11,1. 21). Appellants further direct our attention to Table 2 of the
Specification as support, relying in particular on the failure of Toner G to
meet requirements (3) and (4). Reply Br. 6-8.
On this record, we do not find Appellants’ reliance on Table 2 as
evidencing a lack of enablement timely where there is no good reason given
why Appellants did not do so in the Appeal Brief. 37 C.F.R. § 41.41(b)(2);
cf McBride v. Merrell Dow andPharms., Inc., 800 F.2d 1208, 1211 (D.C.
Cir. 1986) (internal citations omitted) (“Considering an argument advanced
for the first time in a reply brief... is not only unfair to appellee but also
entails the risk of an improvident or ill-advised opinion on the legal issue
tendered.”). Nonetheless, on this record, we further find the argument with
the proffered evidence unpersuasive that there is a lack of enablement for the
reason that it fails to squarely address the method set forth in Emoto except
to note—without citation to Emoto—that it does not include the
“spheronization step that occurs at a lower rotational velocity relative to a
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rotational velocity of a preceding agglomeration step.” See generally
Appeal Br.; Reply Br. We find this insufficient to rebut the presumption that
Emoto is enabled. Antor Media, 689 F.3d 1282 at 1289.
Thus, on this record, we find the Examiner’s prima facie case of
obviousness as to claim 2 well-founded.
Proffered Results to Rebut Prima Facie Case
Appellants proffer advantages of the claimed invention and contend
that the “satisfactory matching of the ‘toner’ and the ‘photoreceptor’ enables
an unexpected suppression of toner smearing, scattering, memory or ghost
images, imperfect solid images and dead dots—even after long-term
operation and the use of low concentrations of the toner.” Appeal Br. 4-8,
17-20; see also Reply Br. 2-4.
Appellants contend that “obtaining an image preferable in fogging
and memory requires the combination (matching) of a particular
oxytitanium phthalocyanine with a particular toner having a relatively lower
average sphericity but in a limited range” and that this “combination was not
understood at the time of the present invention.” Appeal Br. 8.
Appellants cite paragraphs 23, 448^150 (encompassing Table 2), 5lb-
517 (encompassing Table 3), 571 (Table 4), and 627 (Table 6) of the
Specification for support and further rely on paragraphs 4 and 5 of the Fujii
Declaration11—citing paragraph 620 and Figure 6—for its explanation of
significance of the memory effects results in Figure 6. Table 2 relates to
Toners A-F, which are cited for the ability to obtain acceptable levels of
11 Declaration under 37 C.F.R. § 1.132 of Akiteru Fujii, dated December 16,
2014.
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smearing in combination with photoreceptor 2, in contrast to comparative
Toner G. Appeal Br. 5, 18-19; Spec. 448^150. Table 3 relates to Toners
H-J, which are cited for the ability to reduce residual (ghost) images, thin
spots, and cleaning properties, in contrast to comparative Toners L-N.
Appeal Br. 6, 19; Spec. 516-517. Table 4 relates to the use of a single
toner (Toner A) in combination with photoreceptors meeting the
requirements of claim 2 (Examples 10-13), which provide good thin-line
reproducibility, and with photoreceptors that do not (Comparative Examples
6-8), which provide bad thin-line reproducibility. Appeal Br. 6-7, 20; Spec.
| 571. Appellants maintain that the difference in the photoreceptors
according to claim 2 and the comparative photoreceptors is in the crystal
form of the oxytitanium phthalocyanine. Appeal Br. 7, 20. Table 6 relates
to the use of two inventive toners (denoted as Production Examples 8 and
10) with inventive photoreceptors as well as the use of these components
with comparative photoreceptors and toner (denoted as Production Example
11) . Appeal Br. 7-8, 17-18; Spec. ^ 627. Appellants maintain Table 6 is
evidence “that the claimed invention is significantly superior in terms of
degree of memory phenomenon.” Appeal Br. 7.
Having considered the proffered evidence, we do not find it sufficient
to rebut the prima facie case. It is well established that Appellants bear the
burden of showing that the claimed invention imparts unexpected results. In
re Geisler, 116 F.3d 1465, 1470 (Fed. Cir. 1997); In re Klosak, 455 F.2d
1077, 1080 (CCPA 1972). To meet this burden, Appellants must show that
the results actually would have been unexpected, and that the unexpected
results are reasonably commensurate with the scope of protection sought by
the claim on appeal. In re Grasselli, 713 F.2d 731, 743 (Fed. Cir. 1983); In
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re Clemens, 622 F.2d 1029, 1035 (CCPA 1980); Klosak, 455 F.2d at 1080.
Further, when relying on the criticality of the recited values, Appellants must
establish that the particular range is critical. In re Woodruff, 919 F.2d 1575,
1578 (Fed. Cir. 1990) (“The law is replete with cases in which the difference
between the claimed invention and the prior art is some range or other
variable within the claims. ... in such a situation, the applicant must show
that the particular range is critical, generally by showing that the claimed
range achieves unexpected results relative to the prior art range.”).
As to the results being unexpected, Appellants do not direct us to any
statement in the Specification attesting to the unexpected nature of the
results or to any persuasive evidence that the results would have been
unexpected at the time of the invention. See generally Appeal Br.; Reply Br.
The various contentions in the Appeal and Reply Briefs of a surprising
discovery, of unexpected results, or that the combination of a particular
photoreceptor and particular toner to obtain improved results was not
understood are not sufficient to bear Appellants’ burden. See, e.g., Geisler,
116 F.3d at 1471 (“Geisler made no such assertion [that results were
unexpected] in his application. Nor did Geisler submit any such statement
through other evidentiary submissions, such as an affidavit or declaration
under Rule 132 .. . Instead, the only reference to unexpected results was a
statement by Geisler’s counsel. . . that Geisler’s results were ‘surprising.’”).
Nor do we find in the Fujii Declaration a sufficient basis to establish that any
of the results were unexpected, even had Appellants relied on it for that
purpose.
As to establishing the criticality of the matching of a particular
photoreceptor and particular toner, Appellants have not established
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criticality in the proffered evidence that a photoreceptor differing from the
claimed photoreceptor results in lower quality images (Figures 4, 6). As to
the ranges of requirements (l)-(4), we find the limited number of values
insufficient to establish criticality of the recited ranges, particularly where
the values outside the claimed range lie well outside the claimed range. In
particular, Appellants rely on a toner particle having sphericity outside and
above the claimed range having a sphericity of 0.981 (Appeal Br. 7, citing
Production Example 11 in Table 6) and on toner particles having a number
variation coefficient outside the claimed range having values of 24.5 and
25.6 (Appeal Br. 5-6; Table 2, Toner G) and Table 3, Toner N,
respectively), and fail to direct us to further examples with values outside the
ranges12 (see generally Appeal Br.; Reply Br.).
As to the results, or evidence of criticality, being commensurate with
the scope of the claims, Appellants’ position is unsupported on this record.
As noted by the Examiner, “[t]he claims permit any toner . . . any values
within requirements (l)-(4) as claimed” (Final Office Action issued
February 25, 2015 (“Final Act.”), 4), but the proffered evidence is limited to
core shell toners (id.; see also Ans. 15-16), which Appellants do not contest
(see generally Appeal Br.; Reply Br.). As to Appellants’ apparent position
that the composition and structure of the toner particles do not matter
“[bjecause the effects of the claimed method are derived from the
combination of average particle diameter, a particular amount of fine
powder, and a particular oxytitanium phthalocyanine (OPC)” (Appeal Br.
12 Appellants contend that the average sphericity in Comparative Examples
32 and 33 in Table 6 are too low (Appeal Br. 7), however, the average
sphericity is listed as 0.935 (Table 6), a value within the range recited in
claim 2.
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21-22), we find it unsupported on this record in the absence of persuasive
evidence. In re Pearson, 494 F.2d 1399, 1405 (CCPA 1974) (“Attorney’s
argument. . . cannot take the place of evidence.”). Further, as also well
stated by the Examiner, the claims permit any number variation coefficient
of 22.0% or less, but “[tjhere is no evidence for toners from 0% to just
below 18.0%.” Final Act. 4. For these reasons, Appellants have not shown
evidence of criticality that is commensurate with the scope of claim 2. See
In re Harris, 409 F.3d 1339, 1343 (Fed. Cir. 2005) (holding that the
applicant must show unexpected results covering the scope of the claimed
range or narrow the claims).
Turning to Appellants’ further contentions that the Examiner erred in
relying on erroneous factual conclusions (Appeal Br. 21-23), we find them
unpersuasive of reversible error. First, as to the Dns requirement (3) and the
contention that the Examiner erred in “finding that it can be from 0% to
100% of 0.233EXP (17.3/Dv50)” (Appeal Br. 21), we find the Examiner’s
clarification (see Ans. 17) sufficient and unrebutted by Appellants (see
generally Reply Br.). Second, as to Appellants’ contention that the
Examiner erred in finding Takeda teaches that narrowing particle size
distribution can be used to provide uniform charge distribution that allows
various asserted unexpected results (Appeal Br. 22-23), we find it of no
import because it is the Appellants’ burden to establish unexpected results
and that the obtained results are commensurate with the scope of the claims,
not the Examiner’s burden to prove the contrary. As discussed above, the
cited portions of the Specification—paragraphs 44 45, 51-53, 516—do not
support Appellants’ position that the results were unexpected. Similarly,
Appellants’ arguments as to the results being affected by the tank used
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(Appeal Br. 23) are unpersuasive of harmful error because “the burden of
showing that the error is harmful normally falls upon the party attacking the
agency’s determination,” In re Chapman, 595 F.3d 1330, 1338 (Fed. Cir.
2010) (quoting Shinski v. Sanders, 556 U.S. 396, 409 (2009), and we find no
sufficient basis to establish the error was harmful in Appellants’ argument.
For the reasons set forth above, therefore, Appellants fail to provide
that their evidence of unexpected results is sufficient to overcome the prima
facie case of obviousness. Grasselli, 713 F.2d at 743.
Separate Contentions of Patentability for Claims 3-6 and 8-9
As to claims 3 and 4, Appellants contend that the rejections should be
reversed because “Emoto’s teaching at paragraph [0045]. . . fails to
recognize the relationship needed to enable a person of ordinary skill in the
relevant art to discover a toner satisfying” the required expressions (3-1) and
(3-2) for claims 3 and 4, respectively, through routine experimentation.
Appeal Br. 24.
On this record, we are not persuaded of reversible error. In particular,
we discern no cogent argument contesting the Examiner’s detailed
determination that minimizing the value of Dv/Dn, particularly toward its
lower bound of 1.00, would concomitantly lead to satisfying requirement
(4). Cf Lovin, 652 F.3d at 1357. Further, Appellants’ argument fails to
squarely address the rejection set forth by the Examiner grounded on what
the collective teachings of Emoto, Xu, and Takeda would have suggested to
a person of ordinary skill in the art, In re Keller, 642 F.2d 413, 425 (CCPA
1981), and, therefore, fails to explain why the artisan would not have been
led to the claimed subject matter through no more than routine
experimentation.
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As to claim 5, Appellants contend that the rejection should be
reversed because “Emoto’s teaching at paragraph [0045]. . . fails to
recognize the relationship needed to enable a person of ordinary skill in the
relevant art to discover a toner satisfying all of the requirements (1)—(4)
through routine experimentation” and because of improved results grounded
on Table 3. Appeal Br. 24-25.
On this record, we discern no cogent argument contesting that the
combination of references would have led the artisan to the subject matter of
claim 5 through no more than routine experimentation as discussed above in
relation to claim 2. Likewise, we also find Appellants’ proffered improved
results fail to rebut the prima facie case for the reasons discussed above in
relation to claim 2.
As to claims 8-10, Appellants’ contentions are in substance no more
than a statement of claim limitations and an assertion that they are not met,
which do not rise to the level of separate argument for patentability.13 See
Lovin, 652 F.3d at 1357; cf. In re Baxter Travenol Labs., 952 F.2d 388, 391
(Fed. Cir. 1991) (“It is not the function of this court to examine the claims in
greater detail than argued by an appellant, looking for nonobvious
distinctions over the prior art.”).
On balance, the evidence of record weighs most heavily in favor of
the Examiner’s conclusion of obviousness.
13 In the event of further prosecution, the Examiner should consider
correcting the oversight of including claim 9 in the listing of claims subject
to rejection over the combination of Gaims in view of Diamond, Emoto, Xu,
and Takada rather than the combination further including Matsuda because
claim 9 depends from claim 8 subject to rejection over the combination
including Matsuda.
17
Appeal 2016-004016
Application 13/933,918
DECISION
The Examiner’s decision rejecting claims 2-12 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)(l)(iv).
AFFIRMED
18