Ex parte GRUSHKIN

Board of Patent Appeals and Interferences

Sep 11, 1998

07702533 (B.P.A.I. Sep. 11, 1998)

Application for patent filed May 20, 1991. 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journal and (2) is not binding precedent of the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. 22
UNITED STATES PATENT AND TRADEMARK OFFICE
____________
BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
____________
Ex parte BERNARD GRUSHKIN
____________
Appeal No. 94-2794
Application No. 07/702,5331
____________
ON BRIEF
____________
Before METZ, JOHN D. SMITH, and PAK, Administrative Patent
Judges.
PAK, Administrative Patent Judge.
DECISION ON APPEAL
This is a decision on an appeal from the examiner’s
refusal to allow claims 1, 2, 5 and 32 which are all of the
claims pending in this application.
The subject matter on appeal is directed to a toner
composition. The critical features of the toner composition
Appeal No. 94-2794
Application No. 07/702,533
Our reference to this publication is to the2
corresponding English translation of record.
2
are the employment of about 30% to about 60% by weight of a
mixture of soft and hard magnetite, with the hard magnetite
accounting for about 10% of the total weight of the toner
composition.
See specification, page 15 and 16. This toner composition is
adequately illustrated in claim 1 which is reproduced below:
1. A toner composition comprising:
a) about 30% to about 70% by weight of a resin;
b) about 30% to about 60% by weight of a mixture of
soft magnetite and hard magnetite; and
c) up to about 10% by weight of a lubricating
component;
wherein said hard magnetite accounts for about 10% of the
total weight of the toner composition, and wherein the
retentivity of said toner composition is from about 3.0 emu/g
to about 8.0 emu/g.
The sole reference of record relied upon by the examiner
is:
Unno et al (Unno) H2-181757 July 16,2
1990
(Japanese Kokai Patent Publication)
Appeal No. 94-2794
Application No. 07/702,533
3
Claims 1, 2, 5 and 32 stand rejected under 35 U.S.C. §
102 (a) as anticipated by or, in the alternative under 35 U.S.C.
§ 103 as unpatentable over, the disclosure of Unno.
We reverse.
Appellant does not dispute that the Unno reference
describes or would have suggested the claimed toner
composition within the meaning of 35 U.S.C. § 102 (a) or §
103. Appellant, however, argues that the Rule 131 declaration
of record executed by Grushkin, the sole inventor in this
application, is sufficient to remove Unno as a prior art
reference under 35 U.S.C. § 102(a) and § 103. The dispositive
question is, therefore, whether the Rule 131 declaration is
sufficient to establish that the claimed invention was made
prior to the publication date of the Unno reference. We
answer this question in the affirmative.
37 CFR § 1.131 states in relevant part:
(a)(1) When any claim of an application . . . is
reje
cted
unde
r 35
U.S.
C. §
102(
a)
Appeal No. 94-2794
Application No. 07/702,533
4
or
(e),
or
35
U.S.
C. §
103
base
d .
. .
on
refe
renc
e to
a
fore
ign
pate
nt
or
to a
prin
ted
publ
icat
ion,
the
inve
ntor
of
the
subj
ect
matt
er
of
the
reje
cted
clai
m .
Appeal No. 94-2794
Application No. 07/702,533
5
. .
may
subm
it
an
appr
opri
ate
oath
or
decl
arat
ion
to
over
come
the
pate
nt
or
publ
icat
ion.
The
oath
or
decl
arat
ion
must
incl
ude
fact
s
show
ing
a
comp
leti
on
of
Appeal No. 94-2794
Application No. 07/702,533
6
the
inve
ntio
n in
this
coun
try
. .
.
befo
re .
. .
the
date
of
the
fore
ign
pate
nt,
or
befo
re
the
date
of
the
prin
ted
publ
icat
ion.
. .
.
(b)
The
show
ing
of
fact
s
Appeal No. 94-2794
Application No. 07/702,533
7
shal
l be
such
, in
char
acte
r
and
weig
ht,
as
to
esta
blis
h
redu
ctio
n to
prac
tice
prio
r to
the
effe
ctiv
e
date
of
the
reference. . . .
Here, the Rule 131 declaration evinces completion of a
toner composition having about 53% by weight of styrene/n-
butyl acrylate copolymer resin, 30% by weight of soft
magnetite, 10%
Appeal No. 94-2794
Application No. 07/702,533
8
by weight of hard magnetite, 1% by weight of a charge control
agent and 6% by weight of a polywax (lubricant). The Rule 131
declaration also indicates the criticality of employing a
mixture of soft and hard magnetite, with the hard magnetite
accounting for about 10% of the total weight of the toner
composition. This toner composition, including its specific
critical features, is included in the appealed claims. See,
e.g., In re Stryker,
435 F.2d 1340, 168 USPQ 372 (CCPA 1971). Accordingly, we
conclude that the Rule 131 declaration does show sufficient
facts which establish completion of the claimed subject matter
prior to the publication date of the Unno reference. It then
follows that the Unno reference cannot be qualified as prior
art under
35 U.S.C. § 102(a) or 35 U.S.C. § 103.
Appeal No. 94-2794
Application No. 07/702,533
9
In view of the foregoing, we reverse the examiner’s
decision rejecting claims 1, 2, 5 and 32 under 35 U.S.C. §
102(a) or 35 U.S.C. § 103.
REVERSED
ANDREW H. METZ )
Administrative Patent Judge )
)
)
)
) BOARD OF PATENT
JOHN D. SMITH ) APPEALS
Administrative Patent Judge ) AND
) INTERFERENCES
)
)
)
CHUNK K. PAK )
Administrative Patent Judge )
Appeal No. 94-2794
Application No. 07/702,533
10
William K. Wells, Jr.
KENYON & KENYON
1025 Connecticut Ave., NW
Washington, DC 20036
CKP/jrg
JENINE GILLIS
Appeal No. 94-2794
Serial No.
07/702,533
Judge PAK
Judge METZ
Judge JOHN D. SMITH

Received: 03 Sep 98
Typed: 04 Sep 98
DECISION: REVERSED

Send Reference(s): Yes No
or Translation(s)
Panel Change: Yes No
3-Person Conf. Yes No
Remanded: Yes No
Brief or Heard
Group Art Unit: 1507
Index Sheet-2901 Rejection(s): ___________
Acts 2: ____
Palm: ____
Mailed: Updated Monthly Disk (FOIA): ____
Updated Monthly Report: ___
Appeal No. 94-2794
Application No. 07/702,533
12