Ex parte Yokota

Board of Patent Appeals and Interferences

Apr 24, 2001

08610069 (B.P.A.I. Apr. 24, 2001)

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written for publication and is not binding precedent of the Board.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. 19

UNITED STATES PATENT AND TRADEMARK OFFICE
_____________
BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
_____________
Ex parte SABURO YOKOTA
_____________
Appeal No. 1998-2169
Application 08/610,069
______________
HEARD: March 22, 2001
_______________
Before KIMLIN, PAK and WALTZ, Administrative Patent Judges.
KIMLIN, Administrative Patent Judge.
DECISION ON APPEAL
This is an appeal from the final rejection of claims 1-19
, all the claims in the present application. Claim 1 is
illustrative:
1. An organic photoconductor comprising a
cylindrical electrically conductive support and,
formed thereon in this order, a charge-generating
layer and a charge- transporting layer, the external
surface of said cylindrical electrically conductive
support having an index of surface area as defined
by the following
Appeal No. 1998-2169
Application No. 08/610,069
2
equation (I) of from 0.01 to 0.10, and said charge-
generating layer having a multilayer structure
comprising a charge-generating layer having n-type
semiconductor characteristics and a
charge-generating layer having p-type semiconductor
characteristics:
(Sa/Sm)-1 (I)
wherein Sa is the actual surface area of the external
surface of said cylindrical electrically conductive
support and Sm, is the theoretical surface area
thereof calculated on the assumption that said
support is an ideal cylinder.
The examiner relies upon the following references as
evidence of obviousness:
Honda et al. (Honda) 4,735,883 Apr. 05, 1988
Yokota et al. (Yokota) JP 07-160010 Jun. 23, 1995
Chem. Ab 123:301495, Abstract of JP 07-160010
Appellant’s claimed invention is directed to an organic
photoconductor comprising a cylindrical electrically
conductive support which has an external surface having an
index of surface area in the range of 0.01 to 0.10. The index
of surface area is defined in the specification and claim 1.
According to appellant, “the index of surface area of the
present invention does not require expensive processing
Appeal No. 1998-2169
Application No. 08/610,069
3
techniques because it does not require surface finishing by
turning.” (page 2 of principal brief).
Appealed claims 18 and 19 stand rejected under 35 U.S.C.
§ 112, second paragraph. In addition, all the appealed claims
stand rejected under 35 U.S.C. § 103 as being unpatentable
over JP ‘010 in view of Honda.
Upon careful consideration of the opposing arguments
presented on appeal, we will not sustain the examiner’s
rejections.
We consider first the examiner’s rejection of claims 18
and 19 under 35 U.S.C. § 112, second paragraph. According to
the examiner, the language of claim 18 is indefinite “because
it is unclear how the photoconductor is ‘used’ in the instant
claims” i.e., “[i]t is unclear if this is an intended use (in
which case it provides no positive limitation to the claims),
a functional limitation to the photoconductor, or an attempt
to draft an apparatus claim.” (page 3 of answer). In
response, appellant maintains that the term “used” is not a
recitation of intended use but “can be considered as
containing a functional limitation” (page 5 of principal
Appeal No. 1998-2169
Application No. 08/610,069
4
brief). The examiner is not persuaded by appellant’s
explanation and reasons that “[s]tating that the
photoconductor is ‘used’ in the apparatus does not clearly
recite
that the photoconductor has the capability for such use.
Rather, the claims state that the photoconductor is actually
used in the apparatus” (page 6 of answer).
While the examiner is technically correct that the claim
language “states that the photoconductor is so used not that
it has the capability for this use” (page 6 of answer), we
find that one of ordinary skill in the art, based on the
present specifi-cation and file wrapper estoppel associated
with appellant’s statement that claim 18 recites a functional
limitation and not an apparatus, would understand that the
scope of claim 18 is limited to the organic photoconductor
defined in claim 1 which has the capability of being used in
an electrophotographic apparatus.
Turning to the § 103 rejection, the examiner recognizes
that JP ‘010 doses not disclose the claimed index of surface
Appeal No. 1998-2169
Application No. 08/610,069
5
area for the conductive support. Therefore, the examiner
relies upon Honda as evidence that “the surface roughness is a
result effective variable for controlling interference” (page
7 of answer) and consequently, one of ordinary skill in the
art would have arrived at appellant’s index of surface area
upon optim-izing the result effective variable.
Appellant, at pages 8 and 9 of the principal brief,
offers calculations to demonstrate that when the D/R value of
Honda is 0.035 and 0.07, the values disclosed in the
reference, the corresponding indexes of surface area are 7.66
x 10-5 and 30.64 x 10-5, respectively, which values are well
below the lower limit of 0.01. The examiner does not refute
the accuracy of appellant’s calculations but mistakenly states
that the Honda D/R value of 0.07 gives an index of surface
area of 3.064 x 104 (page 7 of answer, last two lines.)
Manifestly, the value used by the examiner to support the
conclusion that D/R values of 0.035 or higher would include
values within the claimed range is an erroneous restatement of
the value calculated at page 9 of appellant’s principal brief,
Appeal No. 1998-2169
Application No. 08/610,069
6
namely, 30.64 x 10-5. Furthermore, appellant demonstrates in
calculations in the reply brief that a higher D/R value,
0.089, corresponds to an index of surface area of 0.0005 which
is outside the claimed range. We not that the examiner has
not criticized appellant’s calculations in the reply brief.
Hence, while it is generally true that it is a matter of
prima facie obviousness for one of ordinary skill in the art
to optimize a result effective variable, it is not generally
obvious for one of ordinary skill in the art to optimize
outside of a range disclosed by the prior art. In re Sebek,
465 F.2d 904, 907, 175 USPQ 93, 95 (CCPA 1972).
Accordingly, based on the present record, we concur with
appellant that the examiner has not established a prima facie
case of obviousness for the claimed subject matter.
In conclusion, based on the foregoing, the examiner's
decision rejecting the appealed claims is reversed.
REVERSED
Appeal No. 1998-2169
Application No. 08/610,069
7
EDWARD C. KIMLIN )
Administrative Patent Judge )
)
)
) BOARD OF PATENT
CHUNG K. PAK ) APPEALS AND
Administrative Patent Judge ) INTERFERENCES
)
)
)
THOMAS A. WALTZ )
Administrative Patent Judge )
vsh
Appeal No. 1998-2169
Application No. 08/610,069
8
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