Ex Parte Matsumura et al

Board of Patent Appeals and Interferences

May 23, 2007

10658811 (B.P.A.I. May. 23, 2007)

The opinion in support of the decision being entered today was not
written for publication and is not binding precedent of the Board.

UNITED STATES PATENT AND TRADEMARK OFFICE
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BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
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Ex parte YASUO MATSUMURA, KAZUHIKO YANAGIDA,
MANABU SERIZAWA, HIDEKAZU YAGUCHI,
TSUTOMU KUBO, and SHIGERU SEITOKU
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Appeal 2007-10251
Application 10/658,811
Technology Center 1700
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Decided: May 23, 2007
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Before CATHERINE Q. TIMM, JEFFREY T. SMITH, and
LINDA M. GAUDETTE, Administrative Patent Judges.
SMITH, Administrative Patent Judge.

DECISION ON APPEAL
Statement of the Case
This is an appeal under 35 U.S.C. § 134 from a final rejection of
claims 1-5, and 8-17.2 We have jurisdiction under 35 U.S.C. § 6 (2006).

1 An oral hearing was held on May 9, 2007.
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Application 10/658,811

2

We AFFIRM.
Appellants invented a toner for developing electrostatic images
comprising as a main component a binder resin having a copolymer
consisting of a high transition glass temperature monomer, a low transition
glass temperature monomer, and a hydrophilic monomer (Specification 14).
This toner composition is further defined by independent claim 1 as follows:
1. A toner for developing electrostatic images, comprising as a main
component thereof a binder resin having a copolymer consisting of a
combination of a high Tg monomer having a structure represented by the
following structural formula (1) and a glass transition temperature of 50°C
or higher, a low Tg monomer having a structure represented by the
following structural formula (2) and a glass transition temperature of lower
than 50°C, and a hydrophilic monomer having a structure represented by the
following structural formula (3);

Structural Structural Structural
formula (1) formula (2) formula (3)

R1 R2 R3
H2C══╡ H2C══╡ H2C══╡
R1’ R2’ R3’

wherein R1, R2 and R3 independently represent a hydrogen atom, an alkyl
group, an alkylester group, an alkylether group, a perfluoroalkyl group, a
methoxy group, an ethoxy group, a halogen atom, a carbazole group, a
pyrrolidone group, a formyl group, a cyclohexyl group, an alkyl group
having a functional group, or an alkylester group having a functional group,
R1’ and R2’ independently represent an alkyl group, an alkylester group, an
alkylether group, a perfluoroalkyl group, a methoxy group, an ethoxy group,
a halogen atom, a carbazole group, a pyrrolidone group, a formyl group, a

2 According to Appellants the subject matter of claims 6 and 7 are objected
to for being dependent from a rejected base claim (Br. 3).
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Application 10/658,811

3
cyclohexyl group, an alkyl group having a functional group, or an alkylester
group having a functional group, R3’ represents a hydrophilic group.

The prior art set forth below is relied upon by the Examiner as
evidence of obviousness:
Carlson US 2,297,691 Oct. 6, 1942
Tanaka US 4,504,563 Mar. 12, 1985
Kojima US 6,214,510 B1 Apr. 10, 2001
Shiraishi US 2003/0077534 A1 Apr. 24, 2003

Arthur S. Diamond and David S. Weiss eds., (hereafter “Diamond”),
Handbook of Imaging Materials 155-164, 173-89, 209, 210, 217-20 (2d. ed.,
Marcel Dekker, Inc., New York 2002)

Claims 1-5, 13, and 16 stand rejected under 35 U.S.C. § 102(b) as
anticipated by Tanaka; claims 11, 12, 14, and 17 stand rejected under
35 U.S.C. § 103(a) as unpatentable over Tanaka in view of Diamond; claim
8 stands rejected under 35 U.S.C. § 103(a) as unpatentable over Tanaka,
Diamond in view of Shiraishi; claim 9 stands rejected under 35 U.S.C.
§ 103(a) as unpatentable over Tanaka, in view of Carlson; and claims 9, 10,
and 15 stand rejected under 35 U.S.C. § 103(a) as unpatentable over Tanaka,
Carlson in view of Kojima.
The § 102 rejection.
Claims 1-5, 13, and 16 stand rejected under 35 U.S.C. § 102(b) as
anticipated by Tanaka.
Anticipation under 35 U.S.C. § 102 requires that a prior art reference
describe each and every limitation of a claimed invention with “sufficient
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Application 10/658,811

4
specificity” to establish anticipation. Atofina v. Great Lakes Chemical
Corp., 441 F.3d 991, 999, 78 USPQ2d 1417, 1423 (Fed. Cir. 2006)).
The issue presented for review with respect to this rejection is: Does
the Tanaka reference have a disclosure that anticipates the claimed subject
matter? We answer this question in the affirmative.
The Examiner finds that Tanaka describes a toner for developing
electrostatic images comprising as a main component a binder resin having a
copolymer consisting of a high transition glass temperature monomer, a low
transition glass temperature monomer, and a hydrophilic monomer. The
Examiner points to claim 11 of Tanaka as describing the binder component
(Answer 3-4). Appellants have not disputed the Examiner’s factual findings.
Appellants contend that Tanaka does not teach in discrete
embodiments the binder component of the claimed toner (Br. 10).
Appellants’ contention is not persuasive. Appellants acknowledge that
Tanaka’s claim 11 describes a copolymer comprising methyl
methacrylate/iso-butyl methacrylate/methacrylic acid copolymer.
Appellants have not argued on the written record that this copolymer does
not contain a high Tg monomer, a low Tg monomer, and a hydrophilic
monomer. 3, 4 Rather, Appellants argue that Tanaka does not disclose that

3 The claimed invention refers to the glass transition temperature (Tg) of a
monomer. However, the glass transition temperature (Tg) is the temperature
at which an amorphous polymer is transformed from a viscous or rubbery
condition to a relatively hard brittle condition. Appellants have not
presented information regarding the methods for determining glass transition
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Application 10/658,811

5

the monomer components of the copolymer have been chosen to have a high
Tg monomer, a low Tg monomer, and a hydrophilic monomer (Br. 12).
Appellants further argue that Tanaka does not provide examples relating to
the preparation of the copolymer of claim 11 (Br. 12).
A reference is not limited to the descriptions of the preferred
disclosure or the disclosure of the examples, all its portions must be
considered for what they disclose to one of ordinary skill in the art. A
person of ordinary skill in the art forming a toner composition comprising
the copolymer described in Tanaka’s claim 11 would have been practicing
the claimed invention. Tanaka discloses the suitability of forming a
copolymer comprising methyl methacrylate/butyl methacrylate/methacrylic
acid copolymer to a person of ordinary skill in this art (see columns 2 and 3).
Mehl/Biophile Int’l Corp. v. Milgraum, 192 F.3d 1362, 1366, 52 USPQ2d
1303, 1307 (Fed. Cir. 1999) (“ Where, as here, the result is a necessary
consequence of what was deliberately intended, it is of no import that the
article=s authors did not appreciate the results. ” )

temperature of the identified monomers. We will presume that the required
Tg is based upon a homo-polymer of the identified monomer.
4 Contrary to the arguments of the Brief, Appellants’ representative at the
Hearing indicated that the copolymer of Tanaka claim 11 did not meet the
requirements of the claimed invention. Appellants’ representative purported
to have evidence to support this position. However, such evidence was not
presented to the Examiner for review prior to this appeal. This evidence was
not accepted at the hearing and we have not considered it in deciding this
appeal.
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Application 10/658,811

6

Regarding the rejections of claims 8-12, 14, 15, and 17 over Tanaka in
view of various secondary references, we affirm the rejections for the
reasons presented by the Examiner.5 Appellants argue that Tanaka does not
describe a binder component that meets the claimed invention. The
Appellants assert that each of the secondary references does not provide
teachings relating to the preparation of the binder resins comprising
copolymers of the specifically claimed monomer types. These arguments
are not persuasive because they do not address the rejections as set forth by
the Examiner. The Examiner did not rely on the secondary references for
describing the binder resin comprising the claimed copolymer. The
Examiner has provided factual determinations regarding the teachings of the
secondary references and the suitability of combining these teachings with
the Tanaka reference. Appellants have not argued that the references could
not be combined in the manner suggested by the Examiner.
Based on the record of this appeal, one with ordinary skill in this art at
the time of the invention would have had motivation to combine the cited
references based on the reasonable expectation that the toner composition of
Tanaka could comprise the features of the secondary references as suggested
by the Examiner.

5 Claims 11, 12, 14, and 17 stand rejected under 35 U.S.C. § 103(a) as
unpatentable over Tanaka in view of Diamond; claim 8 stands rejected under
35 U.S.C. § 103(a) as unpatentable over Tanaka, Diamond in view of
Shiraishi; claim 9 stands rejected under 35 U.S.C. § 103(a) as unpatentable
over Tanaka, Diamond in view of Carlson; and claims 9, 10, and 15 stand
rejected under 35 U.S.C. § 103(a) as unpatentable over Tanaka, Carlson in
view of Kojima.
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Application 10/658,811

7
Decision
The decision of the Examiner rejecting claims 1-5, 13, and 16 under
35 U.S.C. §102(b) as anticipated by Tanaka; claims 11, 12, 14, and 17 under
35 U.S.C. § 103(a) as unpatentable over Tanaka in view of Diamond; claim
8 under 35 U.S.C. § 103(a) as unpatentable over Tanaka, Diamond in view
of Shiraishi; claim 9 under 35 U.S.C. § 103(a) as unpatentable over Tanaka,
Diamond in view of Carlson; and claims 9, 10, and 15 under 35 U.S.C.
§ 103(a) as unpatentable over Tanaka, Carlson in view of Kojima is
affirmed.
No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. § 1.136(a)(1)(iv)(2006).

AFFIRMED

clj

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