Ex Parte Qi et al

Patent Trials and Appeals Board

Mar 28, 2019

14082801 - (D) (P.T.A.B. Mar. 28, 2019)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE
14/082,801 11/18/2013
88971 7590 04/01/2019
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.
20121115-US-NP 2037
EXAMINER
GOLDEN, CHINESSA T
ART UNIT PAPER NUMBER
1788
NOTIFICATION DATE DELIVERY MODE
04/01/2019 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, BRYNN MARY DOOLEY, SUXIA YANG,
PING LIU, and NAN-XING HU
Appeal2018-005854
Application 14/082,801
Technology Center 1700
Before ROMULO H. DELMENDO, JAMES C. HOUSEL, and
JEFFREY R. SNAY, Administrative Patent Judges.
HOUSEL, Administrative Patent Judge.
DECISION ON APPEAL
Appellant appeals under 35 U.S.C. § 134(a) from the Examiner's
Final decision rejecting claims 1-15. 1 We have jurisdiction over the appeal
under 35 U.S.C. § 6(b ).
We AFFIRM. 2
1 Although the Appeal Brief fails to identify a real party in interest, the
Applicant in this application is Xerox Corporation (Application Data Sheet
filed November 18, 2013). Therefore, for purposes of this appeal, we treat
Xerox Corporation as the Appellant.
2 Our Decision refers to the Specification filed November 18, 2013
("Spec."), Appellant's Appeal Brief filed December 28, 2017 ("Appeal
Br."), the Examiner's Answer mailed March 22, 2018 ("Ans."), and
Appellant's Reply Brief filed May 17, 2018 ("Reply Br.").
Appeal2018-005854
Application 14/082,801
STATEMENT OF THE CASE
The invention relates to a fuser member including a release layer
disposed on a substrate, wherein the release layer includes a metal coated
non-woven polymer fiber mesh having a pore size of about 1 µm to about 50
µm and a fluoropolymer dispersed on and throughout the polymer matrix
(Spec. ,r 6).
Claim 1, reproduced below from the Claims Appendix to the Appeal
Brief, is illustrative of the subject matter on appeal.
1. A fuser member comprising:
a substrate; and
a release layer disposed on the substrate, the release layer
having a metal coated nonwoven polymer fiber mesh having
pores of a size of from about 1 microns to about 50 microns,
and a fluoropolymer dispersed throughout the metal coated
non-woven polymer fiber mesh.
Remaining independent claim 12 similarly recites a fuser member as
recited in claim 1, with an intermediate layer disposed between the substrate
and the release layer, wherein the intermediate layer is made of
fluoropolymers or silicone.
REJECTIONS
The Examiner maintains, and Appellant requests our review of, the
following rejections under 35 U.S.C. § 103:
1. Claims 1-8 and 10-14 as unpatentable over Qi' 897, 3 in view of
Tsotsis; 4 and
3 Qi et al., US 2012/0224897 Al, published September 6, 2012 ("Qi'897").
4 Tsotsis, US 2010/0264266 Al, published October 21, 2010.
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Application 14/082,801
2. Claims 9 and 15 as unpatentable over Qi'897 and Tsotsis,
further in view ofQi'42I. 5
ANALYSIS
We review the appealed rejections for error based upon the issues
Appellant identifies in light of the arguments and evidence produced
thereon. Ex parte Frye, 94 USPQ2d 1072, 1075 (BPAI 2010) (precedential)
cited with approval in In re Jung, 637 F.3d 1356, 1365 (Fed. Cir. 2011)
("[I]t has long been the Board's practice to require an applicant to identify
the alleged error in the examiner's rejections."). After considering the
evidence presented in this Appeal and each of Appellant's arguments, we are
not persuaded that Appellant identifies reversible error. Thus, we affirm the
Examiner's rejections for the reasons expressed in the Answer. We add the
following primarily for emphasis.
Rejection 1
Appellant argues the claims together as a group, focusing on the
common limitations of claims 1 and 12. We select claim 1 as representative.
Claims 2-8 and 10-14 stand or fall with claim 1. 37 C.F.R.
§ 4I.37(c)(l)(iv) (2017).
The Examiner finds that Qi'897 teaches a fuser member substantially
as recited in claim 1 except that the non-woven polymer fiber mesh is not
taught to be metal coated (Ans. 3--4). However, the Examiner finds that
Tsotsis teaches a fiber-metal laminate comprising a metal coated fabric and a
substrate, wherein the metal coated fabric has metal coated non-woven
polymer fibers (id. at 4). The Examiner concludes that it would have been
5 Qi et al., US 2012/0208421 Al, published August 16, 2012 ("Qi'42I").
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Application 14/082,801
obvious to coat Qi'897's non-woven polymer fiber mesh in order to provide
a low density, high strength, high modulus, tailorable structure having an
exceptional fatigue resistance and excellent thermo-mechanical endurance
properties in accordance with Tsotsis' teachings (id.).
Appellant argues that Tsotsis teaches away from a metal coated non-
woven polymer fiber mesh having the pores recited in claim 1 (Appeal Br.
3). Appellant contends that Tsotsis refers to the terms "cladding" and
"coating" interchangeably and teaches covering the fabric with metal or
forming a layer of metal on the fabric, which precludes the fabric from
having the pores as recited in claim 1 (Appeal Br. 4; Reply Br. 3--4).
Moreover, Appellant asserts that even if Tsotsis metal coats individual
fibers, Tsotsis fails to teach how to produce a metal coated non-woven
polymer fiber mesh having pores of 1-50 µm from those fibers (Reply Br.
2).
This argument is not persuasive of reversible error. As the Examiner
finds (Ans. 14), Tsotsis teaches that the metal coatings may be applied to the
individual fibers or to the formed fabric (Tsotsis ,r 25). Tsotsis also teaches
that the metal coatings may substantially completely or partially coat the
fibers or fabric (id.). Further, Tsotsis teaches that the metal coated fabric
may be a non-woven fabric (id. ,r 27). Thus, Tsotsis' teachings encompass
non-woven fabric made from fully or partially metal-coated individual
fibers. Appellant's argument, by focusing only on other embodiments of
Tsotsis in which a coating layer is applied to completely cover the formed
fabric, ignores the full scope of Tsotsis' disclosure.
While Tsotsis is silent with regard to any porosity in the resulting
metal-coated non-woven polymer fiber fabric, Appellant fails to direct our
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Application 14/082,801
attention to any teaching in Tsotsis criticizing, discrediting, or otherwise
discouraging such porosity. In re Gurley, 27 F.3d 551, 553 (Fed. Cir. 1994).
Indeed, teaching an alternative or equivalent embodiment does not teach
away from the use of a claimed embodiment. See In re Dunn, 349 F.2d 433,
438 (CCPA 1965). We note that the only difference between such an
embodiment of Tsotsis and Qi' 897 is the metal coating on the polymer
fibers. Accordingly, one of ordinary skill in the art would reasonably expect
that such a metal-coated non-woven polymer fiber fabric would be porous.
As for the pore sizes of such a fabric, Appellant fails to direct our
attention to any persuasive technical reasoning or evidentiary showing that
providing pores of the size taught in Qi'897 when the non-woven is metal
coated is beyond the ordinary skill in the art. KSR Int 'l Co. v. Teleflex Inc.,
550 U.S. 398, 401 (2007) ("[I]f a technique has been used to improve one
device, and a person of ordinary skill in the art would recognize that it would
improve similar devices in the same way, using the technique is obvious
unless its actual application is beyond his or her skill.").
Appellant next urges that the Examiner's proposed combination of
Qi' 897 and Tsotsis relies on the improved properties of Tsotsis' laminate
structure of which the metal coated fabric layer is but one element (Appeal
Br. 5). Appellant argues, therefore, that the requisite reason for the
combination is deficient as one cannot ascribe the improved properties of the
laminate structure to one of many elements thereof ( Appeal Br. 5; Reply Br.
4 ). In this regard, Appellant asserts that each of the layers of the laminate
structure provides different properties to the laminate, whereas the
Examiner's motivation asserts that all of the improved properties are
provided by the metal coated fabric (Appeal Br. 5). Moreover, Appellant
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Application 14/082,801
urges that the Examiner has not shown that these improved properties are
important or required in a fuser member (Appeal Br. 6; Reply Br. 5). As
such, Appellant contends that the Examiner's motivation to combine Qi'897
and Tsotsis is no more than a conclusory statement (Appeal Br. 5---6; Reply
Br. 5).
This argument is also not persuasive of reversible error. Tsotsis is
primarily directed to metal coated fabrics (Tsotsis Title, "Metal-Coated
Fabric for Fiber-Metal Laminates;" Abstract, "Disclosed herein are
laminates that include a layer containing a metal-coated fabric;" paragraph 1,
"[t]he present invention relates to metal-coated fabrics"). Thus, although the
improved properties recited in Tsotsis, paragraph 12, are attributed to the
laminate structures, a skilled artisan would reasonably expect that the metal
coated fabric contributes an important and significant amount of these
improvements (see Ans. 16). Moreover, those skilled in the art would
reasonably expect that a fuser member would benefit from the improved
properties Tsotsis teaches for the metal coated fabric, including low-density,
high-strength, high-modulus, fatigue resistance and thermo-mechanical
endurance, because such members were known to be subjected to both heat
and pressure (see Spec. ,r 3 ("The receiving member passes between a
pressure roll and a heated fuser roll or element.")). Further, the Examiner's
articulated reasoning for the combination of Qi'897 and Tsotsis is based on
rational underpinning found in Tsotsis in that Tsotsis teaches these improved
properties for a laminate having a metal coated fabric. In re Kahn, 441 F.3d
977, 988 (Fed. Cir. 2006) ("[R]ejections on obviousness grounds cannot be
sustained by mere conclusory statements; instead, there must be some
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Application 14/082,801
articulated reasoning with some rational underpinning to support the legal
conclusion of obviousness."), quoted with approval in KSR, 550 U.S. at 418.
For these reasons and those set forth in the Examiner's Answer, we
sustain the Examiner's§ 103 rejection of claims 1-8 and 10-14 over Qi'897
in view of Tsotsis.
Rejection 2
Claims 9 and 15 are rejected as unpatentable under 35 U.S.C. § 103
over Qi'897 and Tsotsis, and further in view of Qi'42I.
The Examiner relies on Qi' 421 for its teaching of a fuser member
having a non-woven polymer fiber mesh, whose polymer fibers have a
fluoropolymer sheath (Ans. 13). Appellant argues that Qi' 421 fails to
correct deficiencies in the combination of Qi'897 and Tsotsis (Appeal Br. 7;
Reply Br. 5). For the reasons set forth above and in the Answer with regard
to Rejection 1, Appellant's argument does not identify a reversible error in
the combination of Qi'897 and Tsotsis. In addition, Appellant fails to
identify reversible error in either the Examiner's findings with regard to
Qi' 421 or the conclusion of obviousness based thereon.
For these reasons and those set forth in the Answer, we sustain the
Examiner's§ 103 rejection of claims 9 and 15.
DECISION
Upon consideration of the record, and for the reasons given above and
in the Answer, the decision of the Examiner rejecting claims 1-15 is
affirmed.
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No time period for taking any subsequent action in connection with
this appeal maybe extended under 37 C.F.R. § 1.136(a)(l).
AFFIRMED
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