Ex Parte Dooley et al

Patent Trial and Appeal BoardOct 29, 2018

14082806 (P.T.A.B. Oct. 29, 2018)

UNITED STA TES p A TENT AND TRADEMARK OFFICE APPLICATION NO. FILING DATE 14/082,806 11/18/2013 88971 7590 10/31/2018 Hoffman Warnick LLC 540 Broadway 4th Floor Albany, NY 12207 FIRST NAMED INVENTOR Brynn Mary Dooley 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. 20121113-US-NP 8280 EXAMINER ROBINSON, ELIZABETH A ART UNIT PAPER NUMBER 1787 NOTIFICATION DATE DELIVERY MODE 10/31/2018 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): ptocommunications@hoffmanwarnick.com PTOL-90A (Rev. 04/07) UNITED STATES PATENT AND TRADEMARK OFFICE BEFORE THE PATENT TRIAL AND APPEAL BOARD ExparteBRYNNMARYDOOLEY, YUQI, EDWARD GRAHAM ZWARTZ, and NAN-XING HU Appeal2017-007554 Application 14/082,806 Technology Center 1700 Before MICHAEL P. COLAIANNI, WESLEY B. DERRICK, and MERRELL C. CASHION, JR., Administrative Patent Judges. COLAIANNI, Administrative Patent Judge. DECISION ON APPEAL Appeal2017-007554 Application 14/082,806 Appellants 1 appeal under 35 U.S.C. Â§ 134 the final rejection of claims 1, 2, 4, 5, 7-12, 14, and 15. We have jurisdiction over the appeal pursuant to 35 U.S.C. Â§ 6(b). We AFFIRM. Appellants' invention is directed to surface layers for fuser members useful in electrophotographic imaging apparatuses. (Spec. ,r 2; claim 1 ). Claim 1 is illustrative: 1. A fuser member comprising: a substrate; and a release layer disposed on the substrate, the release layer comprising a fluoropolymer having a plurality of electrospun metal fibers having a diameter of from about 5 nanometers to about 20 microns dispersed throughout the fluoropolymer, wherein the plurality of electrospun metal fibers comprise a metal selected from the group consisting of: copper, silver, zinc, gold, nickel, platinum and palladium, wherein the plurality of electrospun metal fibers have an aspect ratio of from about 100 to about 1,000,000. Appellants appeal the following rejections: 1. Claims 1, 2, 4, 7-12, 14 and 15 are rejected under 35 U.S.C. Â§ 103 as unpatentable over Badesha '818 (US 5,576,818 issued Nov. 19, 1996) and Badesha '788 (US 5,141,788, issued Aug. 25, 1992) in view of Yamamoto (WO 2012/141058 Al) as translated by Tanaka (US 2014/0034360 Al, published Feb. 6, 2014). 1 Although USPTO records indicate that Xerox Corporation is the applicant, there is no statement identifying the real party in interest as differing from the named inventors, as required by 37 C.F.R. Â§ 4I.37(c)(l)(i). See generally App. Br. 2 Appeal2017-007554 Application 14/082,806 2. Claims 1, 2, 4, 5, 7-12, 14, and 15 are rejected under 35 U.S.C. Â§ 103 as unpatentable over Henry (US 5,933,695, issued Aug. 3, 1999) in view of Yamamoto as translated by Tanaka. Appellants' arguments focus on the subject matter of claim 1 only. Any claim not argued separately will stand or fall with our analysis of the rejection of claim 1. FINDINGS OF FACT & ANALYSIS Rejection (1) Appellants argue that, absent impermissible hindsight, there is no motivation to combine the teachings of Tanaka and the Badesha references (hereinafter, Badesha) (App. Br. 4; Reply Br. 2). Appellants argue that Badesha '818 's transfer member is not exposed to the pressure and temperatures as a fuser member would have been and thus is different than a fuser member (App. Br. 3). Appellants further contend that Tanaka's teachings are directed to an intermediate layer not a surface layer or release layer (App. Br. 4). Appellants argue that the Examiner is not considering Tanaka in its entirety because the full disclosure of Tanaka teaches away from Appellants' claimed invention (App. Br. 4). Appellants contend that Tanaka's invention is directed to a touch panels not a surface layer on a fuser roller (App. Br. 4). Appellants argue that the electrospun wires recited in the claims have major differences from Tanaka's nanofibers (App. Br. 4). Appellants contend that Tanaka's nanofibers require a solvent to disperse them while the electrospun fibers recited in the claims do not use a solvent to disperse the fibers (App. Br. 5). Appellants additionally argue that 3 Appeal2017-007554 Application 14/082,806 Tanaka teaches that the metal nanowires should not be heated to a temperature above 250Â°C, whereas the electrospun fibers are heated to a temperature of 255Â°C to decompose the polypropylene carbonate (PPC) sheath on the fiber (App. Br. 5). Appellants contend that this disclosure in Tanaka teaches away from using electrospun fibers (App. Br. 5). Appellants argue that Tanaka teaches that the metal nanowires should not be heated to a temperature above 250Â°C, whereas the electrospun fibers are heated to a temperature of 255Â°C to decompose the polypropylene carbonate (PPC) sheath on the fiber (App. Br. 5). Contrary to Appellants' arguments, the Examiner finds that Badesha '818 's surface layer on a substrate would have been capable of being used on a fuser roller (Final Act. 4). Although Appellants contend that Badesha '818 's transfer member may not be exposed to the same conditions as a fuser member, Appellants have not shown that Badesha '818 's transfer member is structurally different from the limitations in the claim. Moreover, Badesha '818 discloses that the intermediate transfer member transfers the image to a permanent substrate (e.g., a piece of paper) (col. 1, 11. 7-16). Badesha '818 discloses that the transfer member should have excellent transfix and heat transfer properties ( col. 1, 11. 43--46). Further, Badesha '818 discloses that the intermediate transfer member may take the form of, among others, a drum, cylinder or belt (col. 9, 11. 56-60). Thus, Badesha '818's disclosure comports with Appellants' disclosure that the fixing member may take various forms including a cylinder, drum or belt. Stated differently, Badesha '818 teaches the same layers and structure. Appellants have not persuaded us that Badesha '818 transfer member would have been incapable of functioning as a fuser roll. 4 Appeal2017-007554 Application 14/082,806 We are also unpersuaded by Appellants' argument that the electrospun fibers differ from the nanofibers in Tanaka due to the polymer coating formed on the electrospun fibers. The claim requires electrospun fibers, but the claim does not require a polymer coating on the fiber. In other words, the claim does not require the coaxial electrospun fibers disclosed in the written description as argued by Appellants. In addition, we are unpersuaded by Appellants' contention that Tanaka's use of solvent to form and disperse the nanofibers teaches away from claimed invention that uses electrospun fibers that do not use a solvent. First, the electrospun fibers recited in the claims do not exclude using a solvent to aid in dispersing the fibers. Second, Tanaka teaches that other methods may be used to form the nanofibers (i-f 63). Thus, Tanaka's disclosure does not discourage using non-solvent based methods to form the fibers. We are unpersuaded by Appellants' argument that Tanaka's invention is not related to a release layer or surface layer in a fuser member but rather is directed to a touch panel or solar cell. The Examiner uses Tanaka as a teaching reference regarding the importance of the aspect ratio of the silver/metal fibers to maintaining electrical conductivity while preventing agglomeration of the fibers in the layer (Ans. 3). Tanaka further teaches that the problem to be solved is to provide a conductive member exhibiting high resistance against scratches and abrasion, excellent conduction, excellent transparency, excellent heat resistance, and excellent bendability (Tanaka, ,r 13). Tanaka's teachings regarding forming a conductive layer having these properties are relevant to Badesha '818 's conductive layer having excellent heat transfer characteristics. Moreover, Tanaka's teachings 5 Appeal2017-007554 Application 14/082,806 regarding the aspect ratio of the metal fibers and their relationship to preventing agglomeration of the fibers is relevant to Badesha '818 's layer that includes metal fibers. On this record, we affirm the Examiner'sÂ§ 103(a) rejection over Badesha '818 and Badesha '788 in view of Yamamoto as translated by Tanaka. Rejection (2) Appellants argue that the Examiner has not provided a proper reason to combine Tanaka's teachings with Henry (Reply Br. 5; App. Br. 6). Appellants contend that Henry teaches no significant properties associated with metal fibers and merely uses metal fibers as fillers (App. Br. 6). Contrary to Appellants' argument, the Examiner finds that Henry teaches adding a conductive filler such as a metal fiber in a toner release layer on a fuser roll (Ans. 5). The Examiner finds that, based upon Henry's teachings to use a conductive filler such as metal fibers and Tanaka's teaching of nanofibers being effective as conductive fillers in a fluoropolymer matrix to ensure conductivity without agglomeration of the nanofibers, a person of ordinary skill in the art would have sought conductive metal fibers such as Tanaka's metal fibers (Ans. 5). Appellants further argue that Tanaka teaches to not heat the metal nanowires above 250Â°C, which is contrary to the heating step disclosed by Appellants to remove the polypropylene carbonate (PPC) sheath on the fibers (App. Br. 8). The Examiner correctly finds that Appellants' argument 6 Appeal2017-007554 Application 14/082,806 is not germane to the claim because the claim does not require a sheath on the metal fiber or heating to remove the sheath (Ans. 6). On this record, we affirm the Examiner'sÂ§ 103 rejection over Henry in view of Tanaka. 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. Â§ 1.136(a)(l )(iv). ORDER AFFIRMED 7