Ex Parte Grinwald

Patent Trial and Appeal Board

Sep 25, 2018

14374706 (P.T.A.B. Sep. 25, 2018)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE
14/374,706 07/25/2014
22879 7590 09/27/2018
HP Inc.
3390 E. Harmony Road
Mail Stop 35
FORT COLLINS, CO 80528-9544
FIRST NAMED INVENTOR
Y aron Grinwald
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.
83996235 1082
EXAMINER
AYDIN, SEVAN A
ART UNIT PAPER NUMBER
2852
NOTIFICATION DATE DELIVERY MODE
09/27/2018 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):
ipa.mail@hp.com
barbl@hp.com
yvonne.bailey@hp.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte Y ARON GRINW ALD
Appeal2017-010524
Application 14/374,706 1
Technology Center 2800
Before JEFFREY T. SMITH, A VEL YN M. ROSS, and
MICHAEL G. McMANUS, Administrative Patent Judges.
SMITH, Administrative Patent Judge.
DECISION ON APPEAL
Pursuant to 35 U.S.C. § 134, Appellant seeks our review of the
Examiner's rejections of claims 1---6, 9 and 16-20. We have jurisdiction.
35 U.S.C. § 6.
1 Appellant identifies Hewlett-Packard Indigo B.V, as the real party in
interest. (App. Br. 2).
Appeal2017-010524
Application 14/374,706
STATEMENT OF THE CASE
According to the Specification, Appellant's invention relates to a
method of forming an image on a substrate and a liquid electrophotography
apparatus, which includes a plurality of rollers, arranged to transfer printing
liquid onto a substrate. (Spec. 1 ). Independent claims 1 and 16 are
illustrative of the appealed subject matter, and are reproduced below:
1. Liquid electrophotography apparatus comprising:
a plurality of members defining a flow path for a
printing liquid, at least a first member of the plurality of
members being arranged to generate an electric field;
a first insulation layer comprising a portion of the
surface of the first member for preventing electrical
discharge from the printing liquid, wherein the first
insulation layer comprises a photoresist, wherein an
electrostatic image forming surface is disposed on the
photoresist: and
a fuser to modify the printing liquid to form a
solid, conductive printed pattern on a substrate.
16. A method of forming solid conducive traces on a
substrate, the method comprising:
forming a charged pattern on a first insulated
roller, wherein an insulation on the first insulated roller
comprises a photoresist, wherein the photoresist
comprises an electrostatic image forming surface;
transferring a liquid containing a conductive solid
to charged portions of the first insulated roller to form a
liquid pattern on the first insulated roller;
fusing material of the liquid pattern;
transferring the fused material onto a substrate;
and
solidifying the transferred, fused material on the
substrate, where the solidified material is conductive.
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Appeal2017-010524
Application 14/374,706
On appeal, the Examiner maintains the following rejections:
I. Claims 16 and 20 rejected under 35 U.S.C. § 103 as
unpatentable over the combined teachings of Stasiak et al., (US
2006/0172219 Al, published Aug. 3, 2006) in view of Hayashi et al., (US
5,256,509, issued Oct. 26, 1993).
II. Claims 1-6, 9, and 16-19 rejected under 35 U.S.C. § 103 as
unpatentable over the combined teachings of Combes (US 2004/0152007
Al, published Aug. 5, 2004) in view of Hayashi.
The complete statement of the rejections appear in the Final Action.
(Final Act. 3-8).
We limit our discussion to independent claims 1 and 16.
OPINION
The Examiner finds Combes discloses a liquid electrophotography
apparatus comprising all the features of claim 1 except wherein the first
insulated layer comprises a photoresist, wherein an electrostatic image
forming surface is deposited on the photoresist. (Final Act. 3).
The Examiner finds Stasiak discloses all the features of claim 16
except an insulation on the first insulated roller comprising a photoresist,
wherein the photoresist comprises an electrostatic image forming surface.
(Final Act. 7, and 8).
The Examiner finds Hayashi teaches filling cracks and hollow areas of
a photo conductor to obtain and even surface which results in the image
forming surface deposited on a photoresist. (Final Act. 4).
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Appeal2017-010524
Application 14/374,706
For both of the appealed rejections, the Examiner concludes:
[I]t would have been obvious to one of ordinary skill in
the art at the time of effective filing to provide wherein
an insulation on the first insulated roller comprises a
photoresist, wherein the photoresist comprises an
electrostatic image forming surface. One having
ordinary skill in the art at the time of effective filing
would have done so in order to prevent image defects by
filling in hollows and cracks.
(Final Act. 4, 8).
Appellant argues Hayashi fails to make obvious a photoresist with an
exposed surface which functions as the image surface as required by claim
16. (App. Br. 9). Appellant also argues Hayashi fails to disclose the
suitability of a photoresist as an electrostatic image forming surface as
required by claim 1. (App. Br. 12-14). Appellant further argues the
combination of Hayashi with either Combes or Stasiak does not make
obvious the use of a photoresist as the image forming surface as required by
independent claims 1 and 16.
In response to Appellant's arguments, the Examiner states:
Hayashi teaches modifying the primary reference
[ Combes and Stasiak] by smoothening the scratches in
the photoconductors. As taught, one having ordinary
skill in the art at the time of invention would have known
to coat the photoconductors of the primary reference with
a photoresist to prevent image defects. After developing
the photoresist, leaving behind only the photoresist in the
scratches, one would have predictably arrived at a
smoothened image forming surface. Because the former
scratches are now filled in, there are no longer any image
defects due to the presences of scratches on the
photoconductor surface. The difference between the
primary reference and the claimed invention is thus
obvious in view of Hayashi's teaching to fill in the
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Appeal2017-010524
Application 14/374,706
scratches on a photoconductor surface with photoresist in
order to prevent image defects due to the presence of
scratches ....
As combined, Hayashi teaches that the scratches in
the photoconductor surface are filled with photoresist.
The surface of the photoresist is thus a part of the
smoothened image forming surface.
(Ans. 5).
The Examiner contends in Hayashi the vapor deposited film deposited
on the photoresist is the electrostatic image forming surface that meets the
claimed invention. The Examiner specifically states:
The hard, vapor deposited film, as argued by Appellant,
is disposed on the photoresist. The electrostatic image
forming surface, Appellant further argues, is disposed on
the hard, vapor deposited film.
When A is disposed on B, and B is disposed on C,
A is also disposed on C through B. Appellant admits
through argument that "the electrostatic image forming
surface is disposed on the photoresist[. ]". When
combined as argued, the electrostatic image forming
surface is disposed on the hard vapor deposited film,
which is disposed on the photoresist. Therefore, as
Appellant admits, the image forming surface is disposed
on the photoresist.
(Ans. 7).
Appellant argues the Examiner has not established that the cited
references do not teach the image forming surface is claimed. Appellant
specifically states:
Hiyashi and the other references disclose that a
photoresist may be used as a gap filling material when
covered by a thin film layer. The references do not
disclose, teach, or suggest that the photoresist or any of
the other named non-photoconductor materials would
function as an image forming surface. (Reply Br. 5).
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Appeal2017-010524
Application 14/374,706
Appellant argues in Hayashi the hard protective layer ( deposited
on the substrate photoresist layer) functions as the image forming surface.
Appellant concludes that Hayashi does not teach, suggest or make obvious
the use of the photoresist material as comprising the "image forming
surface." (Reply Br. 4 ).
Appellant has not disputed that it would have been obvious to
combine the teachings of Hayashi with either Combes or Stasiak as proposed
by the Examiner. The dispositive issue for independent claims 1 and 16
differ. Consequently, we will address the independent claims separately
below.
After review of the positions presented by Appellant and the
Examiner we determine the following:
Claim 16
Independent claim 16 requires "forming a charged pattern on a first
insulated roller, wherein an insulation on the first insulated roller comprises
a photoresist, wherein the photoresist comprises an electrostatic image
forming surface."
Appellant argues and the Examiner has not refuted that in Hayashi the
hard protective layer is deposited on the substrate photoresist layer which
functions as the image forming surface. This is not the same as the subject
matter of claim 16 which requires the photoresist to comprise an electrostatic
image forming surface.
For the foregoing reasons we reverse the rejections of claims 16 and
20 over the combination of Stasiak and Hayashi and the rejection of claims
16-19 over the combination of Combes and Hayashi.
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Appeal2017-010524
Application 14/374,706
Claim 1
Independent claim 1 requires: "wherein the first insulation layer
comprises a photoresist, wherein an electrostatic image forming
surface is disposed on the photoresist."
As set forth above, Appellant acknowledges that Hayashi discloses the hard
protective layer is deposited on the substrate photoresist layer that functions
as the image forming surface. This structure appears to be the same as
required by the claimed invention.
For the foregoing reasons we affirm the rejections of claims 1-6 and 9
over the combination of Combes and Hayashi.
DECISION
The rejections of claims 16 and 20 over the combination of Stasiak
and Hayashi and the rejection of claims 16-19 over the combination of
Combes and Hayashi are reversed.
The rejection of claims 1-6 and 9 over the combination of Combes
and Hayashi 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.
AFFIRMED-IN-PART
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