Ex Parte McGuire et al

Patent Trial and Appeal Board

Dec 21, 2012

11257668 (P.T.A.B. Dec. 21, 2012)

UNITED STATES PATENT AND TRADEMARKOFFICE
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.
11/257,668 10/25/2005 Greg McGuire 20040049USNP/XER20895US01 1467
62095 7590 12/21/2012
FAY SHARPE / XEROX - ROCHESTER
1228 EUCLID AVENUE, 5TH FLOOR
THE HALLE BUILDING
CLEVELAND, OH 44115
EXAMINER
LE, HOA VAN
ART UNIT PAPER NUMBER
1721
MAIL DATE DELIVERY MODE
12/21/2012 PAPER
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.
PTOL-90A (Rev. 04/07)

UNITED STATES PATENT AND TRADEMARK OFFICE
_________________

BEFORE THE PATENT TRIAL AND APPEAL BOARD
_________________

Ex parte GREG MCGUIRE, JOHN GRAHAM, ZORAN D. POPOVIC,
AH-MEE HOR, STEPHAN V. DRAPPEL, and JOHANN JUNGINGER

_________________

Appeal 2011-000571
Application 11/257,668
Technology Center 1700
_________________

Before CATHERINE Q. TIMM, KAREN M. HASTINGS, and
DEBORAH KATZ, Administrative Patent Judges.

KATZ, Administrative Patent Judge.

DECISION ON APPEAL

Appeal 2011-000571
Application 11/257,668

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Statement of the Case
Appellants1 seek our review, under 35 U.S.C. § 134(a), of the
Examiner’s decision to reject claims 3-8, 11-17, 19, 21, and 22. (App. Br.
1.) Claims 1, 2, 9, 10, 18, and 20 have been cancelled. (Id.) We have
jurisdiction under 35 U.S.C. § 6(b). We affirm.
Appellants’ Specification is directed to imaging members for use in
electrophotography, such as for copies, duplicators, and printers. (Spec. 1.)
The Examiner made two rejections,2 each rejection of all of the
claims, under the following grounds:
(1) obviousness-type double-patenting over claims 1-18 and 20-25 of
U.S. Patent 7,122,283, issued October 17, 2006, to Qi et al. (“Qi”)
(Ans. 4-6), and
(2) 35 U.S.C. § 103(a) over U.S. Patent 7,212,777 B2, issued May 1,
2007 to Takada et al. (“Takada”) (Ans. 7-9).
Appellants do not argue for the separate patentability of any of the
claims as required under 37 C.F.R. § 41.37(c)(1)(vii), though dependent
claim 22 is discussed. The pending claims include three independent claims:
claims 11, 12, and 13. Claims 12 and 13 are representative.
Appellants’ claim 12 recites:
An imaging member having an overcoat layer formed by the
process of:

1 The real party in interest is said to be Xerox Corporation. (App. Br. 1.)
2 The Examiner withdrew rejections over Hogan (U.S. Patent 7,297,457),
Kami (U.S. Patent 7,270,924), Ikuno (U.S. Patent Application Publication
2001/005307), and Ohshima (U.S. Patent Application Publication
2006/0014096). (Ans. 3-4.)
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Application 11/257,668

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(a) providing a layer comprising a charge transport material;
and
(b) depositing a flowable, high viscosity overcoat composition
over the layer comprising the charge transport material, the overcoat
composition consisting essentially of a film forming polymer material
and a solvent, wherein at least the outer surface of the layer formed by
the overcoat composition is substantially free of charge transport
material.

(App. Br. 15, Claims App’x.)
Appellants’ claim 13 recites3:
An imaging member comprising
an overcoat layer disposed over an imaging member layer
comprising a charge transport material,
wherein the overcoat layer is formed from a flowable, high
viscosity overcoat composition which comprises a film forming
polymer material and a solvent and is substantially free of charge
transport materials, and
wherein the viscosity of the overcoat composition is from about
20,000 centipoise to about 50,000 centipoise when measured at 1.0 S-1
shear rate at 25°C using a rheometer.

(App. Br. 16, Claims App’x.)
Both claims 12 and claim 13 are drawn to a product, specifically an
imaging member having a layer of charge transport material and an overcoat
layer that is substantially free of charge transport material. In both claims
the overcoat layer is formed by depositing a “flowable, high viscosity
overcoat composition” over the charge transport material. The viscosity of
the overcoat is defined in claim 13 as falling within specific parameters.

3 Claim 13 has been reformatted by adding indentations to separate elements
of the claimed imaging member. see 37 C.F.R. § 1.75(i).
Appeal 2011-000571
Application 11/257,668

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Rejection over the claims of Qi
The Examiner rejects the current claims under the doctrine of
obviousness-type double-patenting, finding that Qi claims an imaging
member comprising a layer of charge transport material and an overcoat
layer of a siloxane composite deposited on it. (Ans. 5 and 11; Qi, claim 1.)
As the Examiner notes, Appellants’ claimed imaging members also
encompass an overcoat of polysiloxane. (Ans. 11; see App. Br. 13, Claims
App’x; claims 4 and 15). The Examiner finds further that the overcoat layer
claimed by Qi does not require charge transport material. (Ans. 5.) The
Examiner concludes, citing to the Specification of Qi, that because the
imaging member claimed by Qi is dried, the resulting product of the Qi
claims would be the same or obviously the same as the resulting imaging
members claimed by Appellants, because both comprise a charge transport
layer and an overcoat layer. (Ans. 5.)
Appellants argue that Qi does not teach or mention the viscosity
composition that forms the overcoat layer in the claimed imaging member
and does not suggest that the viscosity of the composition will affect the
overall structure and performance of the device. (App. Br. 6.)
We agree with the Examiner that because the overcoat layers currently
claimed and claimed in Qi are both dried and any solvent is removed, the
viscosity parameters recited in Appellants’ current claims is not a patentable
distinction. (See Ans. 6.) Appellants argue that the higher viscosity of the
overcoat layer recited in the current claims prevents diffusion of the charge
transport layer into the overcoat layer and prevents cracking and
deterioration of the devices electrical performance. (App. Br. 7, citing
Spec., ¶ [0033].) Appellants do not direct us to evidence that the final
Appeal 2011-000571
Application 11/257,668

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product claimed in Qi would have more diffusion of the charge transport
layer or more cracking or deterioration than the claimed imaging member.
Though Appellants argue it is the Examiner’s burden to provide
evidence that the claimed product and the product of Qi would be the same
(App. Br. 7), it is sufficient that the Examiner has found that the composition
of the final product of Qi would be the same as that currently claimed.
Appellants do not direct us to evidence that the overcoat layer on the final
product of Qi is different from that claimed. “Where a product-by-process
claim is rejected over a prior art product that appears to be identical,
although produced by a different process, the burden is upon the applicants
to come forward with evidence establishing an unobvious difference
between the claimed product and the prior art product.” In re Marosi, 710
F.2d 799, 803 (Fed. Cir. 1983). Thus, it is Appellants’ burden to provide
evidence of any difference.
Appellants argue, for the first time in the Reply Brief, that the
claimed overcoat layer is structurally different because “[f]orming an
overcoat composition of the presently claimed viscosity produces an
overcoat layer that contains less diffused charge transport material from the
charge transport layer beneath the overcoat layer.” (Reply Br. 2; see also
Reply Br. 4.) Even if the argument had been timely presented, it is merely
attorney argument. “Attorney’s argument in a brief cannot take the place of
evidence.” In re Pearson, 494 F.2d 1399, 1405 (CCPA 1974). We are not
persuaded that the final product claimed in Qi is patentably distinct from the
currently claimed imaging members.
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Rejection over Tanaka
The Examiner finds that Tanaka teaches a dried imaging member
comprising a substrate with an imaging layer that comprises a charge
transport material and an overcoat layer without any charge transport
material required. (Ans. 7, citing Tanaka, col. 31, ll. 39-64.) The Examiner
finds further that Tanaka teaches the overcoat composition is made from an
organic solvent and a film forming polymer, such as perfluoro-alkoxy resin,
and that it is dried after application. (And. 7, citing Tanaka, col. 31, ll. 40-
41 and ll. 62-64.)
Appellants’ arguments are similar to those raised against the rejection
over the claims of Qi. Specifically, Appellants argue that the difference in
the processing steps recited in their claims results in a different structure
over that taught in Tanaka. (App. Br. 9.) Appellants do not direct us to
evidence of this structural difference. Appellants argue that Tanaka teaches
an overcoat layer with a different viscosity because Tanaka teaches that it
has 4.3% solids, while Appellants’ dependent claim 22 has from 7-12%
solids (App. Br. 9; Reply Br. 3, citing to Spec., Table 1), but as the
Examiner notes, and Appellants agree, the final imaging member is dried
and so the overcoat layer is 100% solids (Ans. 15-16; Reply Br. 4). That
imaging members made using the claimed processing steps are better than
imaging members that have no overcoat layer at all, as Appellants argue
(Reply Br. 3), is not persuasive in regard to the disclosure of Tanaka, which
teaches an overcoat layer.
Accordingly, we determine that the weight of the evidence supports
the Examiner’s conclusion of obviousness.
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Conclusion
Upon consideration of the record and for the reasons given, the
rejections of the claims under the doctrine of obviousness-type double-
patenting over the claims of Qi and under 35 U.S.C. § 103(a) over Tanka are
sustained.
Therefore, we affirm the decision of the Examiner.
No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. § 1.136.

AFFIRMED

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