Ex Parte Kurz et al

Patent Trial and Appeal Board

Dec 21, 2018

13940315 (P.T.A.B. Dec. 21, 2018)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE FIRST NAMED INVENTOR
13/940,315 07/12/2013 KarlE. Kurz
81368 7590 12/26/2018
GIBB & RILEY, LLC
Frederick W. Gibb, III, Esq.
537 Ritchie Highway
Suite 2F
Severna Park, MD 21146
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.
20130063-US-NP 5015
EXAMINER
CHACKO DA VIS, DABORAH
ART UNIT PAPER NUMBER
1737
NOTIFICATION DATE DELIVERY MODE
12/26/2018 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):
support@gibbiplaw.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte KARL E. KURZ, AMIR PRIZANT, and
CHRISTOPHER D. BLAIR
Appeal2017-004098
Application 13/940,315
Technology Center 1700
Before LINDA M. GAUDETTE, N. WHITNEY WILSON, and
BRIAND. RANGE, Administrative Patent Judges.
WILSON, Administrative Patent Judge.
DECISION ON APPEAL
Appellant1 appeals under 35 U.S.C. § 134(a) from the Examiner's
September 29, 2015 decision finally rejecting claims 13-23 and 30-34
("Final Act."). We have jurisdiction over the appeal under 35 U.S.C. § 6(b).
We reverse.
1 Appellant is the Applicant, Xerox Corporation, who is also identified as the
real party in interest (Appeal Br. 3).
Appeal2017-004098
Application 13/940,315
CLAIMED SUBJECT MATTER
Appellant's disclosure relates to a method of patterning the exterior of
a printer magnetic roller (Spec. ,r 4 ). The steps of the method include
forming a photoresist on the exterior of a printer magnetic roller, exposing
the photoresist to a light source, developing the photoresist into a patterned
protective layer on the exterior of the printer magnetic roller, and patterning
grooves into the exterior of the printer magnetic roller using the patterned
protective layer (id.). Claims 13 and 19 are representative of the claimed
invention, and are reproduced below from the Claims Appendix to the
Appeal Brief:
13. A method comprising:
forming a photoresist on a full rotational exterior of a
printer magnetic roller;
exposing said photoresist to a light source while rotating
said printer magnetic roller at least one full revolution;
developing said photoresist after said exposing to change
said photoresist into a patterned protective layer on said full
rotational exterior of said printer magnetic roller; and
patterning grooves in said full rotational exterior of said
printer magnetic roller while rotating said printer magnetic
roller at least one full revolution using said patterned protective
layer to produce a patterned printer magnetic roller.
19. A printer magnetic roller comprising:
a fixed magnetic core; and
a cylinder surrounding said fixed magnetic core,
said cylinder having an exterior surface,
said exterior surface having a pattern of grooves that
varies along a length of said printer magnetic roller to induce
directional flow of toner on said exterior surface.
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Application 13/940,315
REJECTIONS
I. Claims 13-23 and 30-34 are rejected under 35 U.S.C. § 112(b) as
indefinite.
I. Claims 13, 15-23, and 30-34 are rejected under 35 U.S.C. § I02(a)(l)
as anticipated by Lee. 2
II. Claim 14 is rejected under 35 U.S.C. § 103 as unpatentable
over Lee in view of Kojima. 3
DISCUSSION
Indefiniteness. The Examiner rejects the claims under 35 U.S.C.
§ 112(b) as indefinite for various reasons, as set forth at pages 3--4 of the
Final Action. In particular, the Examiner determines that various recitations
are unclear, in particular because they do not recite specific details about the
claimed process (Final Act. 3--4). For example, the Examiner contends that
the term "patterning" as used at line 7 of claim 13 is indefinite because the
conditions under which the patterning occur are not identified in the claim,
and the composition of the cylinder (Final Act. 3--4).4 The Examiner has not
rejected the claims on enablement grounds. The claims need not further
specify these conditions in order to satisfy the requirement of definiteness of
35 U.S.C. § 112(b ). Merely that a claim is broad does not mean that it is
2 Lee et al., US 7,828,707 B2, issued November 9, 2010.
3 Kojima et al., US 6,420,090 Bl, issued July 16, 2002.
4 The Examiner also states that "The claims recite minimizing visible noise"
and this is "not clear" (Final Act. 4). However, the claims currently on
appeal, as listed in the Claims Appendix filed June 28, 2016, do not recite
"minimizing visible noise." Accordingly, we need not and do address this
specific issue.
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Appeal2017-004098
Application 13/940,315
indefinite. See In re Johnson, 558 F.2d 1008, 1016 n.17 (CCPA 1977).
Accordingly, we reverse the rejection under § 112(b ).
Anticipation rejection of claim 13. "A prior art reference anticipates
a patent claim under 35 U.S.C. § 102(b) if it discloses every claim
limitation." In re Montgomery, 677 F.3d 1375, 1379 (Fed. Cir. 2012) (citing
Verizon Servs. Corp. v. Cox Fibernet Va., Inc., 602 F.3d 1325, 1336-37
(Fed. Cir. 2010)). In this instance, Appellant contends that Lee does not
disclose "patterning grooves in said full rotational exterior of said printer
magnetic roller" (Appeal Br. 11-14) (emphasis added). In particular,
Appellant argues that Lee does not disclose creating grooves in the roller
itself, but only in a photocurable resin which covers the surface of the roller
(Appeal Br. 12).
It is well established that "the PTO must give claims their broadest
reasonable construction consistent with the specification. Therefore, we
look to the specification to see if it provides a definition for claim terms, but
otherwise apply a broad interpretation." In re ICON Health & Fitness, Inc.,
496 F.3d 1374, 1379 (Fed. Cir. 2007) (citation omitted).
In this instance, the Specification states that the methods of the
invention ''pattern the exterior of the cylinder while rotating the cylinder
( e.g., at least one full revolution) using the patterned protective layer to
produce a patterned cylinder" (Spec. ,r 4, emphasis added). The
Specification, and claim 13, are quite clear in distinguishing the cylinder
from the photoresist (Spec. ,r 26: "a photoresist 202 is formed on the
exterior of a cylinder 200"), so that a patterned cylinder is properly read as
meaning that the pattern is an integral part of the cylinder. Furthermore, the
Specification is explicit in stating that the grooves are formed in (not on) the
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Appeal2017-004098
Application 13/940,315
surface of the cylinder (Spec. ,r 28: "These methods use the patterned
protective layer 232 as a mask to protect the covered portions of the
cylinder, and allow portions of the exterior surface of the cylinder not
protected by the patterned protective photoresist mask to be removed ( down
to a depth controlled by processing power and time)" ( emphasis added).
Accordingly, we conclude that the broadest reasonable interpretation
of the claim language is that the grooves must be formed within the body of
the cylinder.
The Examiner's finding of anticipation is premised on a claim
construction that "[ c ]laim 13 does not recite that the pattern is formed within
the drum body" (Ans. 5). However, as discussed above, we determine that
the broadest reasonable interpretation of the claim language requires that
grooves be formed within the body of the cylinder. Accordingly, we reverse
the anticipation rejection of claim 13 over Lee, as well as the rejections of
the claims which depend from claim 13, namely claims 15-18.
Obviousness rejection of claim 14. Claim 14 depends from claim 13
and is rejected as obvious over Lee in view of Kojima. The Examiner does
not rely on Kojima as disclosing "patterning grooves in" the exterior of the
cylinder (Final Act. 6-7). Thus, we reverse the obviousness rejection of
claim 14 for the reasons discussed above.
Anticipation rejection of claims 19 and 30. Appellant argues claims
19 and 30 together (Appeal Br. 14). Both claim 19 and claim 30 recite a
printer magnetic roller comprising a cylinder with an exterior surface, where
the exterior surface "ha[ s] a pattern of grooves that varies along a length of
said printer magnetic roller to induce directional flow of toner on said
exterior surface." Appellant contends that Lee does not disclose a cylinder
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Application 13/940,315
having a pattern of grooves because, as discussed above in connection with
claim 13, the patterns in Lee's device are in the photoresist and are on top of
the cylinder (Appeal Br. 15). This argument is persuasive. The Examiner
states that because the claims recite that the exterior surface of the cylinder
"ha[ s ]" a pattern of grooves and not that the pattern of grooves is "in the
cylinder," Lee's disclosure of grooves which are on the surface of the
cylinder (in the photosensitive resin) meets this limitation (Ans. 6).
However, the claim language states that the exterior surface of the
cylinder has the pattern of grooves. In combination with the disclosure in
the Specification referenced above which show that the grooves are located
in the cylinder, we determine that the broadest reasonable construction of the
phrase "said exterior surface [ of the cylinder] having a pattern of grooves" is
that the grooves need to be within, and thus part of, the cylinder.
Because Lee does not disclose such an arrangement, Lee cannot
anticipate claims 19 and 30. Accordingly, we reverse the anticipation
rejection of claims 19 and 30, and the claims which depend from them
(claims 20-23 and 31-34).
CONCLUSIONS
We REVERSE the rejection of claims 13-23 and 30-34 under
35 U.S.C. § 112(b) as indefinite.
We REVERSE the rejection of claims 13, 15-23, and 30-34 under
35 U.S.C. § 102(b) as anticipated by Lee.
We REVERSE the rejection of claim 14 under 35 U.S.C. § 103(a) as
unpatentable over Lee in view of Kojima.
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Appeal2017-004098
Application 13/940,315
REVERSED
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