Ex Parte Cody et al

Board of Patent Appeals and Interferences

Mar 26, 2012

11503596 (B.P.A.I. Mar. 26, 2012)

UNITED STATES PATENT AND TRADEMARK OFFICE
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
APPLICATION NO. FILING DATE FIRST NAMED INVENTOR ATTORNEY DOCKET NO. CONFIRMATION NO.
11/503,596 08/14/2006 Craig M. Cody 92459CFR 1792
1333 7590 03/26/2012
EASTMAN KODAK COMPANY
PATENT LEGAL STAFF
343 STATE STREET
ROCHESTER, NY 14650-2201
EXAMINER
JACKSON, MONIQUE R
ART UNIT PAPER NUMBER
1787
MAIL DATE DELIVERY MODE
03/26/2012 PAPER
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.
PTOL-90A (Rev. 04/07)

UNITED STATES PATENT AND TRADEMARK OFFICE
____________

BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
____________

Ex parte CRAIG M. CODY, ANDREW P. KITTLESON,
THOMAS N. TOMBS, and MARK C. ZARETSKY
____________

Appeal 2011-006311
Application 11/503,596
Technology Center 1700
____________

Before BRADLEY R. GARRIS, ADRIENE LEPIANE HANLON, and
JAMES C. HOUSEL, Administrative Patent Judges.

HOUSEL, Administrative Patent Judge.

DECISION ON APPEAL

Appeal 2011-006311
Application 11/503,596

2
Appellants appeal under 35 U.S.C. § 134 from the Examiner’s
decision finally rejecting claims 1 and 4-14 under 35 U.S.C. § 103(a). We
have jurisdiction under 35 U.S.C. § 6(b).
We AFFIRM.
Appellants claim an intermediate transfer member for use in
electrostatography, in particular for the receipt and transfer of electrostatic
images. The transfer member is a multi-layered structure comprising, in
order from outer to inner layers: a release layer, a compliant layer, an outer
conductive layer, an insulating support layer, and a second conductive layer.
At least one conductive connection is provided between the inner side of the
insulating support layer and the outer conductive layer, thereby providing a
conductive connection between the outer conductive layer and the second
conductive layer (Claim 1).
Representative claim 1 reads as follows:
1. An intermediate transfer member for use in an
electrostatographic machine, comprising:
an insulating support layer having an inner side and outer
side;
a conductive outer layer disposed on the outer side of
said insulating layer;
at least one conductive connection between the inner side
of the insulating support layer and the conductive outer layer;
a second conductive layer disposed on the inner side of
said insulating support layer;
a compliant layer disposed on the conductive outer layer;
and
Appeal 2011-006311
Application 11/503,596

3
a release layer disposed on said compliant layer.
The prior art listed below is relied upon by the Examiner
as evidence of obviousness:
Schlueter 6,245,402 B1 Jun. 12, 2001

Appellants’ admitted prior art, Specification, “BACKGROUND OF
THE INVENTION” section, particularly pages 3-5 (hereafter
“APA”).

Under 35 U.S.C. § 103(a), the Examiner rejects claims 1 and 4-14 as
unpatentable over APA in view of Schlueter.
We will sustain this rejection for the reasons expressed in the Answer
with the comments below added for emphasis.
Appellants do not separately argue any of the claims on appeal (Br. 2-
7). For purposes of this appeal, we select claim 1 to decide the issues raised
by this rejection. See 37 C.F.R. § 41.37(c)(1)(vii) (“When multiple claims
subject to the same ground of rejection are argued as a group by appellant,
the Board may select a single claim from the group of claims that are argued
together to decide the appeal with respect to the group of claims as to the
ground of rejection on the basis of the selected claim alone.”).
The Examiner found that the APA teaches an intermediate transfer
member comprising a multi-layered structure as recited in claim 1, lacking
only a conductive connection between the inner side of the insulating
support layer and the conductive outer layer (Ans. 3). Appellants
acknowledge, but do not contest, this finding (App. Br. 2; Rep. Br. 2). We
note that the APA teaches that the intermediate transfer member may be a
seamed belt whose ends may be joined by adhesive bonding (see APA, pg.
Appeal 2011-006311
Application 11/503,596

4
3, ll. 13-16). The Examiner states that Schlueter teaches an intermediate
transfer belt for electrophotographic machines, with a mechanically and
electrically invisible seam formed by joining two ends of the belt at the seam
utilizing an electrically conductive adhesive (Ans. 3). The adhesive joining
the belt ends provides a conductive connection from the inner side of the
support layer to the conductive outer layer (Ans. 4). The Examiner
concluded that it would have been obvious to one having ordinary skill in
the art at the time of the invention to connect the ends of the APA’s
intermediate transfer member with a conductive adhesive to provide a
mechanically and electrically invisible seam as taught by Schlueter, wherein
the conductive adhesive in the invisible seam electrically connects one side
of the support layer to the other in the APA intermediate transfer structure ,
given the predictable results and reasonable expectation of success (id.).
Appellants argue that the APA requires an external electrical contact
be made from a high voltage source directly to the outer conductive layer in
order to establish the electrostatic transfer field (App. Br. 3). As such,
Appellants state that the APA fails to teach “providing any electrical current
flow through or transfer field across the insulating support layer” (App. Br.
3, emphasis omitted). Appellants then argue that Schlueter in contrast
provides an electrical field across the entire transfer member, by
substantially matching the electrical properties of the transfer member
substrate to those of the adhesive in the seam (id.). Appellants conclude that
this difference is significant as, in their view, Schlueter teaches away from
the Examiner’s proposed combination since the APA has an insulating
support layer which is not conductive (App. Br. 4; Rep. Br. 2). Thus, while
the combination of Schlueter with the APA would produce the claimed
Appeal 2011-006311
Application 11/503,596

5
invention, Appellants assert that one would not have employed Schlueter’s
seam adhesive in the APA’s intermediate transfer member given Schlueter’s
teaching that the electrical properties of the seam and substrate should match
(Rep. Br. 2).
Assertions of “teaching away” are evaluated by determining whether
the prior art directly warns against the claimed invention or teaches that the
claimed invention would not work, e.g. Ricoh Co., Ltd. v. Quanta Computer
Inc., 550 F.3d 1325, 1332 (Fed. Cir. 2008) (“A reference may be said to
teach away when a person of ordinary skill, upon reading the reference,
would be discouraged from following the path set out in the reference, or
would be led in a direction divergent from the path that was taken by the
applicant.”) (internal quotation omitted); Baxter Int’l, Inc. v. McGaw, Inc.,
149 F.3d 1321, 1328 (Fed. Cir. 1998) (finding no teaching away where
nothing in the prior art device suggested that the claimed invention was
unlikely to work); In re Gurley, 27 F.3d 551, 553 (Fed. Cir. 1994) (“A
reference may be said to teach away when a person of ordinary skill, upon
reading the reference, would be discouraged from following the path set out
in the reference, or would be led in a direction divergent from the path that
was taken by the applicant.”).
We have evaluated this argument and find it unpersuasive. Neither
the APA nor Schlueter would have led an inventor down an errant path or
discourage using the combination. Initially, as noted by the Examiner,
Schlueter does indeed account for the possibility that the seam adhesive’s
electrical properties poorly match those of the substrate (Ans. 6; Schlueter,
col. 11, ll. 31-33, 50-53; col. 21, ll. 57-60; col. 23, ll. 24-61). We note that
Schlueter refers to the use of a conductive overcoat over the insulating
Appeal 2011-006311
Application 11/503,596

6
substrate to thereby electrically match the conductive adhesive seam. As the
APA already has a conductive outer layer, common sense would indicate
that there is no need to add such an overcoat. In other words, based on
Schlueter’s teaching, one of ordinary skill in the art would have recognized
that the APA’s intermediate transfer belt would merely require use of
Schlueter’s conductive adhesive in the seam ensuring that the electrical
properties in the seam match that of the belt laterally spaced from the seam.
Thus, far from teaching away, Schlueter directs the solution of how to
connect the ends of the APA belt together in a manner that produces a seam
that is mechanically and electrically invisible.
Appellants further argue that Schlueter, column 23, “does not teach
use of a conductive overcoat specifically with an insulating support” (App.
Br. 4,). Indeed, Schlueter does teach, under certain circumstances, that the
resistivity of the overcoat may be near 1012 ohm-cm (Schlueter, col. 23, ll.
54-55). However, contrary to Appellants’ argument, Schlueter does teach an
embodiment with “a relatively insulating substrate and a relatively
conducting adhesive” (id., ll. 24-25). It is for this embodiment that
Schlueter suggests the use of an overcoat to “’hide’ the effects of the highly
mismatched adhesive and substrate electrical properties (id., ll. 41-43).
Schlueter also teaches in this same paragraph that factors such as a low
resistivity overcoat can reduce the required overcoat thickness (id., ll. 55-
57). As set forth above, we find that one of ordinary skill in the art would
have recognized that the conductive outer layer of the APA’s intermediate
transfer member would closely match the conductive seam adhesive thereby
achieving Schlueter’s purpose of creating an electrically invisible seam.
Appeal 2011-006311
Application 11/503,596

7
Appellants further argue that the present invention solves a different
problem for a different system than that taught by Schlueter (App. Br. 5).
Appellants state that “[s]uch failure to solve the problem actually addressed
by [Appellants] by actually following the preferred teachings of the applied
references is strong evidence of the non-obviousness of the present claimed
invention” (App. Br. 6, emphasis omitted). In this case, the problem
Appellants’ invention solves is “the need to have an external electrical
contact to the conductive outer layer as required in the ‘admitted prior art’
. . . facilitating and simplifying the belt construction and HV [(high voltage)]
connection design” (App. Br. 5). Appellants’ solution to this problem is
“having both an inner and outer conductive layer, and methods for
electrically connecting these two conductive layers employing a conductive,
low electrical resistance path . . . utilizing a conductive material” (id.).
We do not find this argument persuasive. The Supreme Court in KSR
Int’l. Co. v. Teleflex Inc., 550 U.S. 398, 419-420 (2007) stated that:
In determining whether the subject matter of a patent claim is obvious,
neither the particular motivation nor the avowed purpose of the
patentee controls. . . .
The first error of the Court of Appeals in this case was . . . by
holding that courts and patent examiners should look only to the
problem the patentee was trying to solve.

The Supreme Court explained that “[u]nder the correct analysis, any
need or problem known in the field of endeavor at the time of [the] invention
and addressed by the patent can provide a reason for combining the elements
in the manner claimed.” KSR Int'l. Co., 550 U.S. at 420. In other words, a
prior art reference solution may be considered by one of ordinary skill in the
art to establish obviousness under 35 U.S.C. § 103(a) if it is reasonably
Appeal 2011-006311
Application 11/503,596

8
pertinent to any problem with which one of ordinary skill in the art is
concerned. This broadened test suggested by KSR is consistent with the
language of 35 U.S.C. § 103 which requires us to focus on one of ordinary
skill in the art, rather than the subjective reason given by inventors in the
Specification, in evaluating the content of the prior art to determine the
propriety of obviousness. While any advantages or problem solving
intended by inventors as described in the Specification may be considered as
relevant secondary evidence, they are not controlling in terms of evaluating
the contents of the prior art references for the purpose of determining
appropriateness of their combinability. Graham v. John Deere Co., 383 U.S.
1, 17-18 (1966).
Here, the APA already contains part of the solution proposed by
Appellants, that being the inner and outer conductive layers of the
intermediate transfer member. Schlueter is addressing the problem of how
to join the ends of an intermediate transfer member with an electrically
invisible seam. One of ordinary skill in the art would have recognized that
this problem would be in common with the APA’s intermediate transfer
member when joining its ends. Schlueter’s solution, using a conductive
adhesive to join the ends, would solve this problem. As indicated by
Appellants, the combination of the APA with Schlueter produces the
invention (Rep. Br. 2). As Schlueter identifies both a problem in common
with the APA and a solution to that problem, we agree with the Examiner
that the ordinarily skilled artisan would have found the use of the solution of
joining the ends of the APA with conductive adhesive to have been obvious.
Finally, we have considered Appellants’ argument that the Examiner
has employed “impermissible hindsight reconstruction of the claimed
Appeal 2011-006311
Application 11/503,596

9
invention based on [Appellants’] own teachings and selected portions of the
cited art for which there is no teaching or suggestion to combine (and rather,
teachings away based on the actual teachings of such references as explained
above)” (App. Br. 6, emphasis omitted).
This argument is not persuasive for the reasons set forth above and
our comments below. An Examiner avoids the application of impermissible
hindsight by supplying the requisite factual basis and convincing line of
reasoning to support the obviousness conclusion. See KSR Int’l. Co., 550
U.S. at 421 (noting that the fact finder must be aware “of the distortion
caused by hindsight bias and must be cautious of arguments reliant upon ex
post reasoning.”); In re Warner, 379 F.2d 1011, 1017 (CCPA 1967). To
support a conclusion that a claim is directed to obvious subject matter, an
Examiner must present a “convincing line of reasoning” as to why one of
ordinary skill in the art would have found the claimed invention to have been
obvious. Ex parte Clapp, 227 USPQ 972, 973 (BPAI 1985); see also, 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 articulated reasoning with some rational underpinning to
support the legal conclusion of obviousness.”), quoted with approval in
KSR, 550 U.S. at 418.
In the record before us, it is clear that the Examiner has complied with
both requirements for supporting the obviousness conclusion. The Examiner
supplied the requisite factual basis for this conclusion by citing to the APA
which taught every element of claim 1 except for a conductive connection
between the inner side of the insulating support layer and the outer
conductive layer, and Schlueter which taught the use of a conductive
Appeal 2011-006311
Application 11/503,596

10
adhesive to join the ends of an intermediate transfer member together to
ensure that the seam is electrically invisible (Ans. 3). Further, the Examiner
articulated the rationale underpinning the conclusion, indicating that one of
ordinary skill in the art would have joined the ends of the APA’s
intermediate transfer member together with a conductive adhesive as taught
by Schlueter to provide a mechanically and electrically invisible seam (Ans.
4). We find no error in either aspect of this rejection.
Accordingly, we sustain the Examiner’s rejection as to appealed
claims 1 and 4-14.

Conclusion
The decision of the Examiner 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).
AFFIRMED

ssl