Ex Parte Qi et al

Patent Trial and Appeal Board

Nov 28, 2018

14082816 (P.T.A.B. Nov. 28, 2018)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE
14/082,816 11/18/2013
88971 7590 11/30/2018
Hoffman Warnick LLC
540 Broadway
4th Floor
Albany, NY 12207
FIRST NAMED INVENTOR
Yu Qi
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.
20121616-US-NP 2303
EXAMINER
ENGLISH, PATRICK NOLAND
ART UNIT PAPER NUMBER
1787
NOTIFICATION DATE DELIVERY MODE
11/30/2018 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
Ex parte YU QI, QI ZHANG,
BRYNN MARY DOOLEY,
SUXIA YANG, and NAN-XING HU
Appeal2018-000160
Application 14/082,816
Technology Center 1700
Before MICHAEL P. COLAIANNI, GEORGE C. BEST, and
N. WHITNEY WILSON, Administrative Patent Judges.
WILSON, Administrative Patent Judge.
DECISION ON APPEAL
Appellants 1 appeal under 35 U.S.C. § 134(a) from the Examiner's
October 31, 2016 decision finally rejecting claims 1-10, 19, and 20. Claims
11-18 are withdrawn from consideration as directed to a non-elected invention.
We have jurisdiction over the appeal under 35 U.S.C. § 6(b).
We affirm.
1 Appellants do not explicitly identify the real party in interest. Appellants'
counsel is reminded that identification of the real party in interest is required
unless the inventors are the real parties in interest. 37 C.F.R. § 41.37(c)(i). The
USPTO patent assignment database identifies the assignee of Application
14/082,816 ("the '816 Application") as Xerox Corporation.
Appeal2018-000160
Application 14/082,816
CLAIMED SUBJECT MATTER
Appellants' invention is directed to surface layers for fuser members
useful in electrophotographic imaging apparatuses, including digital, image
on image, and the like (Spec. ,r 1 ).
Independent claim 1 is reproduced below from the Claims Appendix
of the Appeal Brief (emphasis added):
1. A fuser member comprising:
a substrate; and
a release layer disposed on the substrate, the release
layer having non-woven polymer fibers having graphene
particles dispersed along the fibers and a fluoropolymer
dispersed throughout the non-woven polymer fibers.
REJECTIONS
(1) Claims 1 and 5-7 are provisionally rejected on the grounds of
nonstatutory obviousness-type double patenting (OTDP) as unpatentable
over claims 1-3, 6, 7, 9, 10, and 15 of co-pending Application 13/706,027
("the '027 Application").
(2) Claims 1, 5, 8-10, and 19 are rejected under
35 U.S.C. § I02(a)(l) as anticipated by Qi '602. 2
(3) Claims 2--4 and 20 are rejected under 35 U.S.C. § 103 as
unpatentable over Qi '602 and further in view of Gervasi. 3
(4) Claim 6 is rejected under 35 U.S.C. § 103 as unpatentable over
Qi '602.
2 Qi et al., US 2012/0225602 Al, published Sept. 6, 2012.
3 Gervasi et al., US 2011/0103854 Al, published May 5, 2011.
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Application 14/082,816
(5) Claim 7 is rejected under 35 U.S.C. § 103 as unpatentable over
Qi '602 and further in view of Qi '4 21. 4
We exercise our discretion not to review the Examiner's provisional
rejection of claims 1 and 5-7 for OTDP. See Ex parte Jerg, 2012 WL
1375142 at *3 (BPAI 2012) (informative) ("Panels have the flexibility to
reach or not reach provisional obviousness-type double-patenting
rejections." (citing Ex parte Moncla, 95 USPQ2d 1884 (BPAI 2010)
(precedential))). While we do not affirm (or reverse) the Examiner's
provisional OTDP rejection, should any claims issue from the '027
Application, the Examiner remains free to assert a non-provisional OTDP
rejection based on any such issued claims. 5
Arguments urging reversal of the anticipation and obviousness
rejections are directed to limitations recited in independent claims 1 and 19
(see generally Appeal Br. 3-5; Reply Br. 2--4). Accordingly, we limit our
discussion to claim 1, which we select as representative of the claims subject
to these rejections. 37 C.F.R. § 4I.37(c)(l)(iv).
DISCUSSION
Rejection (2) under 35 U.S.C. § I02(a)(l)
In rejecting claim 1, the Examiner finds that Qi '602 describes each of
the claimed fuser member's components with the exception of the requisite
release layer made of non-woven polymer fibers, on which "graphene
4 Qi et al., US 2012/0208421 Al, published Aug. 16, 2012.
5 Appellants reserve the right to address the Examiner's provisional rejection
of claims 1 and 5-7 for OTDP after at least one claim is indicated as
allowable (Reply Br. 2).
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Appeal2018-000160
Application 14/082,816
particles are 'dispersed along the fibers."' (Ans. 4, citing Qi '602 ,r,r 10, 24,
34). However, the Examiner finds that "this dispersion of graphene is
considered to be an inherent feature" of Qi '602 's fuser sleeve 130 because it
"is comprised of the same materials (nonwoven polymer fibers,
fluoropolymer, graphene particles) as the instant invention" (id.). The
Examiner concludes that "without evidence to the contrary, [Qi '602's fuser
sleeve materials] are considered to have the same inherent dispersion of
graphene particles along the non-woven polymer fibers as recited in the
instant claim" (id.).
Appellants argue that "there is no prima facie case of anticipation"
with respect to claim 1 because "Qi '602 does not disclose ... the process
used in Appellants' invention." (Appeal Br. 4). In particular, Appellants
contend that Qi '602's process merely coats a dispersion of a fluoropolymer,
graphene, and solvent on fibers, without graphene particles already thereon
(id. at 4).
Appellants assert that claim 1 is distinguished from Qi '602 because
the Specification's described process of initially flow coating a dispersion of
graphene particles and a solvent on the non-woven polymer fiber layer,
followed by solvent removal, results in the formation of "graphene particles
deposited along the polymeric fibers" (id. at 3). Appellants argue that,
unlike Qi '602 's process, the Specification describes that it is only after the
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Application 14/082,816
graphene particles have been deposited that a fluoropolymer and a second
solvent mixture are coated on the polymeric fibers. Id.
We begin by interpreting the language of claim 1. In particular, we
construe the phrase "non-woven polymer fibers having graphene particles
dispersed along the fibers" ( emphasis added).
During prosecution, the PTO gives the language of the proposed
claims "the broadest reasonable meaning of the words in their ordinary
usage as they would be understood by one of ordinary skill in the art, taking
into account whatever enlightenment by way of definitions or otherwise that
may be afforded by the written description contained in the applicant's
specification." In re Morris, 127 F.3d 1048, 1054--55 (Fed. Cir. 1997).
We determine that the language of claim 1 is silent as to any
requirement that all of the graphene particles must be in direct contact with
the non-woven polymer fibers. In view of this silence, it is not dispositive
that the Specification describes that "the graphene particles are deposited
along the fibers in a uniform manner by coating a graphene particle
dispersion and removing the solvent" (Spec. ,r 50); see Phillips v. A WH
Corp., 415 F.3d 1303, 1323 (Fed. Cir. 2005) (en bane) ("[A]lthough the
specification often describes very specific embodiments of the invention, we
have repeatedly warned against confining the claims to those
embodiments."). Therefore, we agree with the Examiner that the broadest
reasonable interpretation of the phrase "dispersed along the fibers" is that it
encompasses articles in which graphene is present on at least some of the
fibers (see Ans. 11 ). That is, the evidence of record does not require that
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Application 14/082,816
phrase "dispersed along" be construed to require direct contact between all
of the graphene particles and the non-woven fibers.
In response to the Examiner's broader interpretation of the disputed
limitation, Appellants argue that particles and fillers included within Qi
'602's fluoropolymer, solvent, and graphene mixture would disperse the
graphene particles throughout the fluoropolymer during Qi '602's coating
step (Reply Br. 2, citing Qi '602 ,r 34). According to Appellants, this
coating process would not result in graphene particles dispersed along the
fibers (id.).
Appellants' arguments are not persuasive because the claims at issue
are drawn to a fuser member apparatus comprising a release layer, not a
process for making that layer. Therefore, the fact that the claimed release
layer may have been formed by a method that differs from Qi '602' s method
is relevant to patentability only if Appellants can establish that the method
used to form the claimed release layer resulted in a structure that patentably
differs from Qi '602 's fuser sleeve 130 structure. Appellants have not
provided persuasive evidence of a structural difference, and, therefore, have
failed to identify reversible error in the Examiner's finding that Qi '602's
fuser sleeve 130 anticipates the claimed structure of graphene present on at
least some of the fibers (Final Act. 3--4; Ans. 12).
Appellants argue that Qi '602 does not identify the problem that
Appellants have solved, namely that "graphene particles agglomerate and
are difficult to uniformly disperse in a polymer composite." (Reply Br. 2,
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Application 14/082,816
citing Spec. ,r 2). This failure, however, is not pertinent to the finding of
anticipation.
On the present record, Appellants have not identified error in the
Examiner's finding that Appellants' claimed structure is described by Qi
'602. Therefore, we affirm the anticipation rejection of claim 1.
Accordingly, claims 5, 8-10, and 19 fall with claim 1. 37 C.F.R.
§ 4I.37(c)(l)(iv).
Rejections (2}-{4) under 35 U.S.C. § 103
"[A]nticipation is the epitome of obviousness." In re McDaniel, 293
F.3d 1379, 1385 (Fed. Cir. 2002) (citations omitted).
Appellants argue that the obviousness rejections should be reversed
because: (i) Qi '602 is deficient for not disclosing the process to make the
claimed release layer as required by claim 1; and (ii) neither Gervasi nor Qi
'421 cure the deficiencies of Qi '602 (Appeal Br. 4--5; Reply Br. 3--4).
Having determined that Appellants have not persuaded us of any such
deficiencies, we also affirm the obviousness rejections of claims 2--4, 6, 7,
and 20.
CONCLUSION
We AFFIRM the rejection of claims 1, 5, 8-10, and 19 under
35 U.S.C. § 102(a)(l) as anticipated by Qi '602.
We AFFIRM the rejection of claims 2--4 and 20 under 35 U.S.C. § 103
as unpatentable over Qi '602 and further in view of Gervasi.
We AFFIRM the rejection of claim 6 under 35 U.S.C. § 103 as
unpatentable over Qi '602.
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We AFFIRM the rejection of claim 7 under 35 U.S.C. § 103 as
unpatentable over Qi '602 and further in view of Qi '421.
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
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