Ex Parte Wu

Patent Trial and Appeal Board

May 25, 2016

13043098 (P.T.A.B. May. 25, 2016)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE
13/043,098 03/08/2011
88971 7590 05/27/2016
Hoffman Warnick LLC
540 Broadway
4th Floor
Albany, NY 12207
FIRST NAMED INVENTOR
Jin Wu
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.
20101471-US-NP 8227
EXAMINER
FREEMAN, JOHN D
ART UNIT PAPER NUMBER
1787
NOTIFICATION DATE DELIVERY MODE
05/27/2016 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):
ptocommunications@hoffmanwarnick.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte JIN WU
Appeal2014-009626
Application 13/043,098
Technology Center 1700
Before JEFFREY T. SMITH, KAREN M. HASTINGS, and
MICHAEL P. COLAIANNI, Administrative Patent Judges.
COLAIANNI, Administrative Patent Judge.
DECISION ON APPEAL
STATEMENT OF THE CASE
This is an appeal under 35 U.S.C. § 134 from a final rejection of
claims 1-8 and 10-15. We have jurisdiction under 35 U.S.C. § 6.
Claim 1 is illustrative of the subject matter on appeal and is
reproduced below:
Appeal2014-009626
Application 13/043,098
1. A fuser member comprising:
a substrate layer comprising a polyimide polymer and an
amine neutralized phosphate ester; and
an intermediate layer disposed on the substrate layer; and
a release layer disposed on the intermediate layer.
Appellant (see Appeal Brief, generally) requests review of the
following rejections from the Examiner's Final Action1:
I. Claims 1, 2, 6, 10-12, and 15 rejected under 35 U.S.C. § 103(a)
as unpatentable over Kondoh (US 6,911,240 B2, issued June 28, 2005) and
Leach (US 3,364,192, issued January 16, 1968).
II. Claims 3-5 rejected under 35 U.S.C. § 103(a) as unpatentable
over Kondoh, Leach and Allam (US 2008/0145564 Al, published June 19,
2008).
III. Claims 7, 8, 13, and 14 rejected under 35 U.S.C. § 103(a) as
unpatentable over Kondoh, Leach and Schlueter, Jr. (US 5,918,099, issued
June 29, 1999).
1 The Examiner only maintains the prior art rejections based on the common
combination of Kondo and Leach. Ans. 4-5. All other prior art rejections
have been withdrawn by the Examiner per the Advisory Action of
September 18, 2013 or the Answer (Ans. 4-5).
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Appeal2014-009626
Application 13/043,098
Rejection I (claim 1)2
OPfNION
Prior Art Rejections
After review of the respective positions provided by Appellant and the
Examiner, we AFFIRM the Examiner's prior art rejection of claims 1, 2, 6,
10-12, and 15 under 35 U.S.C. § 103(a) for the reasons presented by the
Examiner and add the following for emphasis.
Appellant's invention seeks to eliminate the release layer required on
metal mandrels when manufacturing seamless polyimide belts. App. Br. 5;
Spec. i-fi-12--4. Appellant's invention achieves this by incorporating an
internal release agent of an amine neutralized phosphate ester into the
polyimide composition that self releases from the metal mandrel. Spec.
i134, 60. Thus, independent claim 1 is directed to a fuser member having a
substrate layer comprising a polyimide polymer and an amine neutralized
phosphate ester as one of its component layers.
The Examiner found Kondoh discloses a fuser member (fixing
member) comprising a substrate comprising a polyimide polymer, an
intermediate elastic layer, and a release layer. Final Act. 6; Kondoh col. 1,
11. 15-35, col. 5, 11. 26--48. The Examiner found Kondoh does not disclose
the substrate as containing an amine neutralized phosphate ester as required
2 Appellant relies on the same line of argument in addressing the rejection of
independent claims 1 and 12 and do not present separate argument for the
dependent claims. See Appeal Brief, generally. Accordingly, we select
independent claim 1 as representative of the subject matter before us on
appeal and claims 2, 6, 10-12, and 15 will stand or fall with independent
claim 1.
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Appeal2014-009626
Application 13/043,098
by the subject matter of independent claim 1. Final Act. 6. To overcome
this deficiency, the Examiner relied upon Leach as teaching the claimed
amine neutralized phosphate ester as an antistatic agent for polymeric resins
that suppresses accumulation of static electrical charges of materials used in
machinery drive belts. Final Act. 6; Ans. 6; Leach Abstract, col. 1, 11. 46-
69, col. 3, 11. 57-66. The Examiner determined it would have been obvious
to one of ordinary skill in the art to add Leach's antistatic agents to the
substrate of Kondoh to adjust the static charge properties of Kondoh's fuser
member. Final Act. 7.
Appellant argues the Examiner's assertion that the back surface of the
substrate of Kondoh is in contact with rollers and would therefore, be subject
to the buildup of charge is unsupported because a static charge is a surface
phenomenon that occurs when surfaces are subjected to friction or rubbing.
App. Br. 7-8; Leach col. 1, 11. 25-32.
We are unpersuaded by Appellant's arguments and agree with the
Examiner's determination of obviousness for the reasons provided by the
Examiner. Ans. 6-10. As noted by the Examiner, one of ordinary skill in
the art would have recognized static buildup and discharge is undesirable in
an electronic device such as a photocopying machine or laser printer having
an endless belt driven by rollers. Ans. 8. The Examiner found the skilled
artisan would adjust the static charge properties of the fuser member belt of
Kondoh using the antistatic agents of Leach to avoid unnecessary static
charge buildup detrimental to electronics in a device in view of Leach's
disclosure that materials incorporating Leach's antistatic agents are useful as
machinery drive belts. Ans. 8; Leach col. 3, 11. 57-66. Appellant has not
adequately explained why one skilled in the art would have found the
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Appeal2014-009626
Application 13/043,098
incorporation of Leach's amine neutralized phosphate ester antistatic agent
in the polyimide belt substrate of Kondoh undesirable as a means to protect a
machine from unwanted accumulation of static charge.
Appellant also argues that the cited art does not address the
elimination of prior art release layers required on metal mandrels when
manufacturing seamless polyimide belts. App. Br. 5; Spec. i-fi-12--4.
We are also unpersuaded by this argument. As noted by the
Examiner, Leach discloses the antistatic agents as mold lubricants alone or
in combination with conventional lubricants. Ans. 9-10; Leach col. 3, 11. 3-
9. Moreover, in this same section, Leach specifically teaches blending the
antistatic agent directly with the polymer before molding to homogenize
them throughout the resin to ensure permanent antistatic properties. Leach
co 1. 3, 11. 9-1 7. That is, Leach suggests adding the antistatic agents to the
polymer composition prior to molding as an alternative to applying the
agents to the mold itself. Appellant has not adequately explained how the
use of the claimed amine neutralized phosphate ester differs from the use of
Leach's antistatic compounds.
Accordingly, we affirm the Examiner's prior art rejection of claims
1, 2, 6, 10-12, and 15 for the reasons presented by the Examiner and given
above.
Rejections II and III
In addition, the Examiner separately rejected claims 3-5 under 35
U.S.C. § 103(a) as unpatentable over Kondoh, Leach and Allam (Rejection
II) and claims 7, 8, 13, and 14 under 35 U.S.C. § 103(a) as unpatentable over
Kondoh, Leach and Schlueter, Jr. (Rejection III). Final Act. 7-8. In
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Appeal2014-009626
Application 13/043,098
addressing these separate rejections, Appellant relies primarily on the
arguments presented when discussing Rejection I. App. Br. 8. Appellant
did not substantially address or further distinguish the respectively cited
secondary references based on the additional limitations of the dependent
claims. Id.
Accordingly, we sustain the Examiner's Rejections II and III for the
reasons presented by the Examiner and given above.
ORDER
The Examiner's prior art rejections of claims 1-8 and 10-151 are
affirmed.
TIME PERIOD
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).
AFFIRMED
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