Ex parte MANIAR

Board of Patent Appeals and Interferences

Aug 26, 1998

08145118 (B.P.A.I. Aug. 26, 1998)

Application for patent filed November 3, 1993. 1
We note that in the final rejection the examiner rejected claims 1-22 as being unpatentable over Laing. The inclusion of2
claim 11 in the rejection appears to be an inadvertent error on the part of the examiner because the examiner acknowledged
(continued...)
-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a law journal and (2) is not binding precedent of the Board.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. 25
UNITED STATES PATENT AND TRADEMARK OFFICE
____________
BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
_____________
Ex parte DEEPAK R. MANIAR
____________
Appeal No. 95-3759
Application 08/145,1181
____________
ON BRIEF
____________
Before KIMLIN, WEIFFENBACH and WARREN, Administrative Patent Judges.
WEIFFENBACH, Administrative Patent Judge.
DECISION ON APPEAL
This is a decision on appeal under 35 U.S.C. § 134 from the examiner's final rejection of
claims 1-10 and 12-22 which are all of the claims remaining in the application. We reverse.2
Appeal No. 95-3759
Application 08/145,118
(...continued)2
on the PTOL-326 summary action form of the final rejection and on page 2, ¶1 in the body of the action that claim 11 had
been cancelled.
-2-
Claimed Subject Matter
The claims on appeal are directed to a method of preparing a developer composition
comprising the steps of blending carrier particles with finely divided toner particles, separating fine
particles and debris from coarse particles, and then blending the coarse particles with toner particles.
On page 3 of the brief, appellant acknowledges all of the pending claims stand or fall together.
Accordingly, we will limit our consideration to claim 1, the broadest independent claim, which reads
as follows:
1. A method of preparing a developer composition comprising the steps of:
(1) blending carrier particles with finely divided toner particles, wherein
blending is carried out for a period of time sufficient to enable the toner particles to
alter the tribocharging ability of the carrier particles and become embedded therein;
(2) removing fine particles and debris by dividing the blend of toner particles
and carrier particles into coarse particles and fine particles; and
(3) blending the coarse particles with toner particles.
Appeal No. 95-3759
Application 08/145,118
See footnote 2, supra.3
This is a new ground of rejection.4
This is a new ground of rejection.5
-3-
References of Record
The following references of record are relied upon by the examiner as evidence of
obviousness:
Laing et al. (Laing) 4,678,734 Jul. 7, 1987
Ong (Ong I) 5,300,387 Apr. 5, 1984
Ong (Ong II) 5,332,636 Jul. 26, 1994
The Rejections
Claims 1-10 and 12-22 stand rejected under 35 U.S.C. § 103 as being unpatentable over
Laing.3
Claims 1-10 and 12-22 stand rejected under 35 U.S.C. § 103 as being unpatentable over Laing
in view of Ong I or Ong II.4
Claim 1 stands rejected under 35 U.S.C. § 112, second paragraph, as being indefinite for
failing to particularly point out and distinctly claim the subject matter which applicant regards as the
invention.5
Appeal No. 95-3759
Application 08/145,118
-4-
Opinion
We have carefully reviewed the respective positions presented by appellant and the examiner.
In so doing, we find ourselves in agreement with appellant that the applied prior art fails to establish
the prima facie obviousness of the claimed subject matter and that the claims are not indefinite under
the second paragraph of 35 U.S.C. § 112. Accordingly, we will not sustain any of the examiner's
rejections for essentially those reasons advanced by appellant in the brief and reply brief. We add the
following primarily for emphasis.
The examiner made a new rejection in the answer of claim 1 under the second paragraph of
35 U.S.C. § 112. According to the examiner, it was unclear (i) what is meant by the term “coarse
particles” and (ii) what distinguishes “finely divided toner particles” from “fine particles” and “toner
particles”. In response to this new ground of rejection, appellant pointed to page 4 of the
specification where the terms “coarse” and “fine” are defined. The examiner subsequently withdrew
that portion of the rejection pertaining to the meaning of the term “coarse particles”, but maintained
the rejection with respect to the remaining grounds of the rejection.
The definiteness of claim language must be analyzed, not in a vacuum as the examiner appears
to have done, but always in light of the teachings of the prior art and of the particular application
disclosure as it would be interpreted by one possessing the ordinary level of skill in the pertinent art.
In re Moore, 439 F.2d 1232, 1235, 169 USPQ 236, 238 (CCPA 1971). When so analyzed, we find
that claims satisfy the requirements in the second paragraph of 35 U.S.C. § 112.
Appeal No. 95-3759
Application 08/145,118
-5-
Appellant has defined the term “fine particles” in the specification as “those having particle
size of less than about 2 microns, more preferably having a particle size of from about 0.3 to less than
about 2 microns” (specification: p. 4). Appellant further states that the “fine” particles have an
average diameter smaller than the average diameter of the “toner particles in the blend of carrier and
toner particles” (id). Laing teaches a process of blending carrier particles and classified toner
particles having a particle diameter of from about 2 microns to about 10 microns to alter the
tribocharging ability of the carrier particles and then adding to the blended mixture classified toner
particles having a diameter of from about 6 to about 18 microns (col. 4, lines 20-35). Thus, if Laing’s
toner particles in the first blending step are greater that about 2 microns and appellant’s “fine
particles” are less than about 2 microns, then one skilled in the art could distinguish between “finely
divided toner particles” and appellant’s “fine particles.” As for distinguishing between “finely divided
toner particles” and “toner particles,” appellant discloses that the “toner particles” used in the second
blending step are from about 6 to about 18 microns (specification: p. 4) which is similar to that
disclosed by Laing in his second blending step, and that the average diameters of the toner particles
employed in the first blending step and the second blending step are different (specification: p. 5).
Since appellant refers to Laing in the specification which refers to “fine toner particles” of the first
blending step as having “a diameter of from about 2 microns to about 10 microns,” we find that one
skilled in the art would readily be able to distinguish between “finely divided toner particles and
“toner particles. Thus, the relative difference between “finely divided toner particles” from “fine
particles” and “toner particles” would be known to a person having ordinary skill in the art when
Appeal No. 95-3759
Application 08/145,118
-6-
analyzed in light of appellant’s specification and the prior art. Accordingly, for the foregoing reasons,
we find that the examiner’s rejection of claim 1 under the second paragraph of 35 U.S.C. § 112 lacks
merit.
To make out a prima facie case of obviousness, the examiner must establish that a person
having ordinary skill in the art would have been led to remove fine particles and debris after the initial
blending step by a showing of facts or scientific reasoning flowing from the teachings of the prior art.
See generally In re Napier, 55 F.3d 610, 613, 34 USPQ2d 1782, 1784-85 (Fed. Cir. 1995); In re
Shetty, 566 F.2d 81, 86, 195 USPQ 753, 756-57 (CCPA 1977); Ex parte Levy, 17 USPQ2d 1461,
1462-1464 (Bd. Pat. App. & Int. 1990), and cases cited therein. The examiner has admitted that
Laing does not teach or suggest a step of separating coarse particles and fine particles debris after the
initial blending step. However, the examiner concludes that “[i]t would have been obvious to one
having ordinary skill in the art at the time the invention was made to remove fine particles and debris
by classifying the particles after the blending step to obtain the desired particle size and to divide out
smaller toner particles as a result of the blending step because Laing et al. teaches [sic, teach] a
desired range for the toner particles that is needed” (answer: p.3).
While Laing employs toner particles classified by particle size in his blending process, the
examiner’s conclusion of obviousness lacks an analysis of Laing and an explanation of why a person
having ordinary skill in the art would have been led or motivated to retain the desired particle sizes
disclosed by Laing and to remove fine particles and debris specifically after the initial blending step.
At column 7, line 59 to column 8, line 32, Laing discloses that
Appeal No. 95-3759
Application 08/145,118
-7-
[w]ith ... respect to the process of the present invention, during the first step
of the blending process ... the toner particles mix with the carrier particles; and are
believed, although it is not intended to be limited by theory, to act in a manner so as
to cause a reduction in the triboelectric charging ability of the carrier surface....
Simultaneously, the charging ability of the toner particle is degraded. However, the
selection of fine toner particles, those for example with an average diameter of from
about 2 to about 10 microns, causes a substantial increase in the surface area of the
toner that is able to act on the carrier surfaces without increasing the mass thereof;
and permits an increase in the probability of the degraded toner particles of becoming
impacted into any crevices or other spaces available on the carrier particle surface.
Accordingly, the degraded toner particles become bound to the carrier surface and do
not adversely impact the initial copy quality.
Similarly, in the second blending sequence a toner composition comprised of
the same components as selected for the first blending operation is selected with the
important exception that the diameter of the toner particles are about 6 to 18, and
preferably 11 microns. Also, the second blending sequence is accomplished for a
sufficient time period to enable the production of a homogeneous mixture of toner
particles and carrier particles; and also to permit the toner particles to acquire charge
by admixing with, and contacting the treated carrier surface... From about 1.25
percent to about 2.50 percent by weight of the toner is added in the second blending
step, however, other amounts may be selected providing there is achieved the
appropriate toner concentration that will preferably provide images with excellent
resolution.
It appears to us from the above teaching from Laing that because it is desirable to employ to increase
the surface area of the toner particles to increase the probability of embedding the toner into the
crevices or other spaces on the carrier surface, there is no reason to remove fine particles of toner or
any other fine particle in the process. Moreover, Laing does not teach or suggest that debris, i.e.
dust, carrier tips and oxide particles (see page 4 of appellant’s specification where the “debris” is
defined), in the final blend would be undesirable. For the foregoing reasons, we find that the
teachings of Laing would not have motivated a person skilled in the art to separate debris and fine
particles from coarse particles as suggested by the examiner. The examiner's suggestion for such a
Appeal No. 95-3759
Application 08/145,118
-8-
separation step could only have come from appellants' disclosure. It did not flow from the teachings
of Laing. The Ong I and Ong II references do not make up for the deficiencies of Laing.
Accordingly, the examiner’s rejections of claims 1-10 and 12-22 over Laing and the combined
teachings of Laing, Ong I and Ong II cannot be sustained.
For the aforementioned reasons, the examiner’s rejections of claims 1-10 and 12-22 are
reversed.
REVERSED
EDWARD C. KIMLIN )
Administrative Patent Judge )
)
)
)
CAMERON WEIFFENBACH ) BOARD OF PATENT
Administrative Patent Judge ) APPEALS AND
) INTERFERENCES
)
)
CHARLES F. WARREN )
Administrative Patent Judge )
Appeal No. 95-3759
Application 08/145,118
-9-
OLIFF & BERRIDGE
P.O. BOX 19928
ALEXANDRIA, VA 22320