Ex Parte Derimiggio et al

Board of Patent Appeals and Interferences

Jun 4, 2009

11286941 (B.P.A.I. Jun. 4, 2009)

UNITED STATES PATENT AND TRADEMARK OFFICE
____________

BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
____________

Ex parte JOHN E. DERIMIGGIO and PAUL FROMM
____________

Appeal 2009-001017
Application 10/286,941
Technology Center 2800
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Decided:1 June 4, 2009
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Before TERRY J. OWENS, PETER F. KRATZ, and MARK NAGUMO,
Administrative Patent Judges.

KRATZ, Administrative Patent Judge.

DECISION ON APPEAL

1 The two-month time period for filing an appeal or commencing a civil
action, as recited in 37 C.F.R. § 1.304, begins to run from the Decided date
shown on this page of the decision. The time period does not run from the
Mail Date (paper delivery) or Notification Date (electronic delivery).
Appeal 2009-001017
Application 11/286,941

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This is a decision on an appeal under 35 U.S.C. § 134 from the
Examiner’s final rejection of claims 19-24. We have jurisdiction pursuant to
35 U.S.C. § 6.
Appellants’ claimed invention is directed to an electrophotographic
fusing system including a fuser roll, pressure roll, a web cleaning belt, and at
least one external heat roll, which heat roll is characterized by a
“predetermined surface roughness.” According to Appellants,
contamination of the fuser roll occurs from toner and other byproducts and
such contamination eventually will affect the pressure roll (Spec. ¶¶ 003-
005). Appellants maintain that the surface roughness of the external heat
roll will remove fuser roll surface contamination (Spec. ¶¶ 008-0010).
Claim 19 is illustrative and reproduced below:
19. A fusing system used in an electrophotographic imaging
apparatus comprising in an operative relationship, at least one external heat
roll, a fuser roll, a pressure roll, and a web cleaning belt, said web cleaning
belt enabled to clean said external heat rolls, said fuser roll in operative
contact at a first location with said pressure roll, said fuser roll in operative
contact at a second location(s) with said external heat roll(s), said external
heat roll having a predetermined surface roughness extending throughout its
length and having substantially a same length as said fuser roll, and enabled
to contact substantially the entire length of said fuser roll to remove debris
on substantially any portion of the surface of said fuser roll in a cleaning
step, said predetermined surface roughness selected from the group
consisting of a random roughness, a patterned roughness and mixtures
thereof, and wherein debris dislodged from said fuser roll is disposed of by a
step selected from the group consisting of a suitable web cleaning step and a
debris system removal step.
The Examiner relies on the following prior art references as evidence
in rejecting the appealed claims:
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Application 11/286,941

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Oota 6,334,041 BI Dec. 25, 2001
Aslam 6,799,000 B2 Sep. 28, 2004

The Examiner maintains the following grounds of rejection:
Claims 19, 20, and 22-24 stand rejected under 35 U.S.C. § 102(b) as being
anticipated by Aslam; and
Claim 21 stands rejected under 35 U.S.C. § 103(a) as being unpatentable
over Aslam in view of Oota.
We affirm the stated rejection for substantially the reasons set forth in
Examiner’s Answer. Our reasoning follows.

Anticipation Rejection
At the outset, we note that Appellants argue claims 19 and 20 together
in the Appeal Brief. Thus, we select claim 19 as the representative claim on
which we shall decide this appeal as to these commonly rejected claims.
Appellants present arguments under several claim number headings for
anticipatorily rejected dependent claims 22-24. Thus, we consider
commonly rejected claims 22-24 separately to the extent that they are
separately argued in the Appeal Brief.
Appellants do not dispute the Examiner’s determination that Aslam
discloses a fusing system including a fuser roll, pressure roll, web cleaning
belt, and at least one external heat roll, arranged as herein claimed (compare
the Answer, pp. 3-4 with the Appeal Brief and Reply Brief). Rather,
Appellants focus their arguments alleging novelty over Aslam on the
predetermined surface roughness of the heat roll as variously specified in the
rejected claims.
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Thus, the principal issues raised by Appellants’ contentions are: Have
Appellants identified reversible error in the Examiner’s anticipation
rejection based on the argued surface roughness limitations recited in the
rejected claims?
We answer these questions in the negative and we affirm the
Examiner’s anticipation rejection.

PRINCIPLES OF LAW
During examination, claims terms must be given “their broadest
reasonable construction consistent with the specification.” In re Icon Health
and Fitness, Inc., 496 F.3d 1374, 1378-79 (Fed. Cir. 2007).
“To anticipate a claim, a prior art reference must disclose every
limitation of the claimed invention, either explicitly or inherently.” In re
Schreiber, 128 F.3d 1473, 1477 (Fed. Cir. 1997); In re Oelrich, 666 F.2d
578, 581, 212 USPQ 323, 326 (CCPA 1981) (the "recitation of a newly
discovered function or property, inherently possessed by things in the prior
art, does not distinguish a claim drawn to those things from the prior art."
However, anticipation by a prior art reference does not require that the
reference recognize either the inventive concept of the claimed subject
matter or the inherent properties that may be possessed by the prior art
reference. See Verdegaal Bros., Inc. v. Union Oil Co., 814 F.2d 628, 633
(Fed. Cir. 1987).
The law of anticipation does not require that the reference ‘teach’
what the subject patent (or application) teaches. Assuming that a reference
is properly ‘prior art,’ it is only necessary that the claims, as construed, ‘read
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on’ something disclosed in the reference, i.e., all limitations of the claim are
found in the reference, or ‘fully met’ by it. See Kalman v. Kimberly-Clark
Corp., 713 F.2d 760, 772 (Fed. Cir. 1983).
When the claimed and prior art articles or apparatuses appear to be
identical or substantially identical, the Examiner can require an applicant to
prove that the prior art article or apparatus does not necessarily or inherently
possess the functional characteristics of the claimed article or apparatus. See
In re Best, 562 F.2d 1252, 1255 (CCPA 1977).

FINDINGS OF FACT
In addition to findings of fact set forth elsewhere herein, we note the
following factual findings. All factual findings in this Opinion are supported
by a preponderance of the evidence.
Aslam describes the use of external heating rollers (1 and 2) in
operative contact for supplying heat to a fuser roll (10) in an electro-
photographic printing system that includes a pressure roller (20) in operative
contact as part of the assembly (col. 2, ll. 58-62; Figs. 1 and 2).
Aslam discloses employing a cleaning web (17) as part of the
assembly for taking up toner and paper dust contaminants off the heating
rollers (col. 2, l. 66 - col. 3, l. 5). Thus, Aslam inferentially discloses that
the heating rollers take up toner and paper dust contaminants from the fuser
roll.
Aslam discloses that the external heating rollers have a finished
metallized hard surface that can be made from anodized aluminum (col. 5, ll.
21-26).
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The Specification provides that Appellants’ external heat rollers have
an anodized aluminum surface with a predetermined roughness (Spec. ¶
008).
The Examiner has found that the external heat rollers of Aslam are not
described as being polished to a mirror finish (perfectly smoothed) and
would be expected to possess some degree of roughness (Ans. 5).

ANALYSIS
Representative claim 19 requires that the external heat roll has a
predetermined surface roughness (random or patterned) such that the roll can
take up debris (contaminants). Representative claim 19 does not require any
particular degree or type of surface roughness. The Examiner has
reasonably found that the predetermined surface roughness requirement of
the heater roll of representative claim 19 does not distinguish the claimed
subject matter over the fuser system of Aslam based on a specified
difference in heater roller surface roughness. After all, Aslam describes
possession of external heater rollers arranged as part of a fuser system,
which heater rollers carry contaminants to a cleaning web 17; that is, away
from the fuser roll. Appellants have not furnished credible evidence in this
appeal record that rebuts the Examiner’s reasonable determination
respecting the surface roughness characteristics intrinsic to the heater rollers
of Aslam.2

2 An Affidavit submitted after the Final Office action stands non-entered and
is not before us for review. See App. Br. 2 and 9 (item IX).
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Concerning dependent claim 22, Appellants have not persuasively
explained how the requirement for projections, pits, or indentations of any
size or number in the claimed heating roller surface patentably distinguishes
over the anodized aluminum heating roller surfaces of Aslam, which
implicitly would possess some surface imperfections as a result of the
manufacture thereof as reasonably found by the Examiner (Ans. 16).
Concerning dependent claims 23 and 24, Appellants have not fairly
articulated how the broadly characterized debris removal capability of claim
23 and/or debris collection capability of a web cleaning belt of claim 24
establishes the novelty of the claimed system over the fuser system
arrangement of Aslam that includes a cleaning web (17) for collecting and
removing contaminants (debris) from the system.

CONCLUSION
Appellants have not identified reversible error in the Examiner’s
anticipation rejection based on the argued surface roughness limitations
recited in the anticipatorily rejected claims.

Obviousness Rejection
Dependent claim 21 requires a random surface roughness equivalent
to about 2 through about 15 R.A. micron (roughness average).3
In addition to Aslam, the Examiner relies on Oota as evidence in
maintaining an obviousness rejection of claim 21.

3 According to Appellants, this roughness average measurement is in
accordance with industry standards (See the sentence bridging pages 3 and 4
of the Specification).
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Oota discloses a cleaning roller having a surface roughness of 0.4 to
3.2 microns for removing developer stuck to a press roller (col. 1, l. 51-59).
According to the Examiner, “[i]t would have been obvious to one of
ordinary skill in the art, at the time the invention was made, to modify
Aslam et al. to include a surface roughness of 0.4 to 3.2 µm, as disclosed by
Oota, on the external heating rollers in order to have sufficient adhesive
strength to collect residual toner (Oota column 9, lines 18-25)” (Ans. 5).
Appellants, on the other hand, urge that Oota cleans a press roller
using a cleaning roller, not a fuser roll using a heating roller, as here claimed
(App. Br. 6).
Have Appellants established reversible error in the Examiner’s
obviousness rejection of claim 21 based on the argument that Oota does not
use a heating roller to clean a fuser roll?
We answer this question in the negative and we affirm the Examiner’s
obviousness rejection. In this regard, the Examiner’s obviousness rejection
is not premised on Oota teaching the entirety of the claimed system,
including the use of an external heating roll to take off contaminant (debris)
from a fuser roll. Rather, the Examiner correctly relies on Aslam for
teaching/suggesting the provision of an external heating roller that is capable
of removing contaminant accumulating on a fuser roller (Ans. 10, 12-18).
Here, Appellants’ argument that Oota is drawn to a different cleaning
system and does not teach using a heater roll to clean a fuser roller is not
persuasive because Aslam discloses an external heater roller that is capable
of cleaning a fuser roller. Appellants have not articulated why one of
ordinary skill in the art would not have found the use of a surface roughness
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corresponding to that suggested for a cleaning roller by Oota for the external
heating roller of Aslam for pick up of contaminants from the fuser system of
Aslam, which is the prima facie obviousness basis for the Examiner’s
rejection of claim 21 under 35 U.S.C. § 103(a), not that Oota teaches
cleaning a fuser roll with an external heating roll.
Where the rejection is based on a combination of references, the test
for obviousness is what the combined teachings of the references would have
suggested to those of ordinary skill in the art. In re Young, 927 F.2d 588,
591 (Fed. Cir. 1991); In re Keller, 642 F.2d 413, 425 (CCPA 1981).
“The combination of familiar elements according to known methods
is likely to be obvious when it does no more than yield predictable results.”
KSR, 550 U.S. 398 at 416. “Indeed, the common sense of those skilled in
the art demonstrates why some combinations would have been obvious
where others would not.” Leapfrog Enter., Inc. v. Fisher-Price, Inc., 485
F.3d 1157, 1161 (Fed. Cir. 2007).
Thus, Appellants have not demonstrated reversible error in the
Examiner’s obviousness rejection of claim 21 based on the argument that
Oota does not use a heating roller to clean a fuser roll.

ORDER
The Examiner’s decision to reject claims 19, 20, and 22-24 under 35
U.S.C. § 102(b) as being anticipated by Aslam; and to reject claim 21 under
35 U.S.C. § 103(a) as being unpatentable over Aslam in view of Oota is
affirmed.
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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)(v).

AFFIRMED

PL Initial:
sld

JAMES J. RALABATE
5793 MAIN ST.
WILLIAMSVILLE, NY 14221