Ex parte Aslam et al.

Board of Patent Appeals and Interferences

Oct 19, 1998

08088012 (B.P.A.I. Oct. 19, 1998)

Application for patent filed July 6, 1993. 1
THIS OPINION WAS NOT WRITTEN FOR PUBLICATION
The opinion in support of the decision being entered
today (1) was not written for publication in a law
journal and (2) is not binding precedent of the
Board.
Paper No. 17
UNITED STATES PATENT AND TRADEMARK OFFICE
____________
BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
____________
Ex parte MUHAMMAD ASLAM, LAWRENCE DEMEJO and DINESH TYAGI
____________
Appeal No. 96-0116
Application No. 08/088,0121
____________
ON BRIEF
____________
Before JOHN SMITH, GARRIS, and WARREN, Administrative Patent
Judges.
GARRIS, Administrative Patent Judge.
DECISION ON APPEAL
This is a decision on an appeal from the refusal of the
examiner to allow claims 1-20 as amended subsequent to the
final rejection. These are all the claims in the application.
Appeal No. 96-0116
Application No. 08/088,012
2
The subject matter on the appeal relates to an image
forming method in an electrostatographic apparatus having a
fuser comprising the steps of forming on a receiver a
composite toner image which includes an underlay image of
underlay toner and an overlay image of overlay toner wherein
the underlay toner is adhesive to the fuser at a release
temperature and the overlay toner is non-adhesive to the fuser
at the release temperature. Further details of this appeal
subject matter are readily apparent from a review of
representative independent claim 1, a copy which taken from
the appellants’ Brief is appended to this decision.
The references relied upon by the examiner as evidence of
obviousness are:
Aslam et al. (‘038) 5,023,038 Jun.
11, 1991
Takashima et al. (Takashima) 5,079,115 Jan.
7, 1992
Ng 5,234,783 Aug. 10,
1993
(Filed Dec. 16, 1991)
Aslam et al. (‘426) 5,254,426 Oct.
19, 1993
(Filed Apr. 1, 1992)
Japanese application 62-294423 May. 26,
1989
Appeal No. 96-0116
Application No. 08/088,012
3
Color Prints with Uniform Gloss, Xerox Disclosure Journal,
Vol. 16, No. 1 (January/February 1991).
Claims 1, 4-6 and 10-14 are rejected under 35 U.S.C. §
103 as being unpatentable over Ng and Aslam ‘038 in view of
Aslam ‘426, and the remaining claims on appeal are similarly
rejected over various combinations of these references and the
other references listed above.
The examiner’s rejections on this appeal cannot be
sustained.
The dispositive issue before us is framed by the
examiner’s exposition and conclusion of obviousness expressed
on page 4 of the Answer which reads as follows:
Ng and Aslam et al. (‘038) discloses [sic] the
claimed invention except for teaching an overlay image on
top of the underlay image in which the overlay toner is
non-adhesive to the fuser at the release temperature
which affects the release temperature of the fuser.
Aslam et al. (‘426) teaches that it is known to
separate the contact fusing and fusing member which makes
it possible to use a fusing temperature which is
sufficient to cause the toner particles and the polymer
layer on the support to form a fused color toner image
that is adhesively adhered to the support and the fused
image and polymer layer can then be separated from the
fusing member after cooling when they do not offset onto
the fusing member as set forth at col 3, lines 35-46; col
4, lines 10-27, col 6-7.
Appeal No. 96-0116
Application No. 08/088,012
4
It would have been obvious to one having ordinary
skill in the art at the time the invention was made to
add an additional layer, a taught by Aslam et al. (‘426)
to the image forming method of Ng and Aslam et al. (‘038)
in order to prevent offset.
The examiner’s above quoted conclusion of obviousness is
without merit for at least two reasons. First, the Aslam ‘426
patent is not prior art against the here claimed invention
since the inventors named in this patent and in the subject
application are identical and since this patent did not issue
more than one year prior to the subject application filing
date. 35 U.S.C. § 102(b); In re Fout, 675 F.2d 297, 300-
301, 213 USPQ 532, 535, footnote 2 (CCPA 1982); Ex parte
Imris, 218 USPQ 957 (Bd. Pat. App. & Int. 1982). Second, even
if Aslam ‘426 were prior art, the teachings thereof and the
teachings of Ng and Aslam ‘038, when combined in the above
quoted manner proposed by the examiner, would not produce a
method corresponding to the method defined by the appealed
claims. This is because, as correctly argued by the
appellants in their Brief, none of these references contains
any teaching or suggestion of the here claimed feature wherein
the underlay toner is adhesive to the fuser at a release
Appeal No. 96-0116
Application No. 08/088,012
5
temperature and the overlay toner is non-adhesive to the fuser
at the release temperature.
Under the foregoing circumstances, we cannot sustain the
examiner’s § 103 rejection of claims 1, 4-6 and 10-14 as being
unpatentable over Ng and Aslam ‘038 in view of Aslam ‘426.
The examiner’s other rejections on this appeal also cannot be
sustained since we find no teaching or suggestion (and the
examiner points to none) in the additional references applied
therein concerning the previously mentioned claim feature.
The decision of the examiner is reversed.

Appeal No. 96-0116
Application No. 08/088,012
6
REVERSED
JOHN D. SMITH )
Administrative Patent Judge )
)
)
)
) BOARD OF PATENT
BRADLEY R. GARRIS ) APPEALS
Administrative Patent Judge ) AND
) INTERFERENCES
)
)
)
CHARLES F. WARREN )
Administrative Patent Judge )
BRG/jlb
Appeal No. 96-0116
Application No. 08/088,012
7
J. Jeffrey Hawley
Eastman Kodak Company
Patent Legal Staff
Rochester, NY 14650-2201
Appeal No. 96-0116
Application No. 08/088,012
8
Appendix
1. An image forming method in an electrostatographic
apparatus having a fuser, comprising the steps of:
forming a composite toner image on a receiver, said
composite toner image having an underlay image comprising
underlay toner and an overlay image comprising overlay toner,
said overlay image being imagewise on top of said underlay
image, said underlay toner being adhesive to said fuser at a
release temperature, said overlay toner being non-adhesive to
said fuser at said release temperature;
fixing said composite toner image on said receiver by
contacting said composite toner image on said receiver with
said fuser; and
releasing said composite toner image on said receiver
from said fuser at said release temperature whereby the
release temperature of the fuser is higher than if said
overlay toner were not on top of said underlay toner.
JoAnne
Appeal No. 96-0116
Application No. 08/088,012
APJ GARRIS
APJ JOHN SMITH
APJ WARREN
REVERSED
Prepared: July 19, 1999