11222232 (B.P.A.I. May. 25, 2012)

Ex Parte Miyake

Board of Patent Appeals and InterferencesMay 25, 2012

11222232 (B.P.A.I. May. 25, 2012)

UNITED STATES PATENT AND TRADEMARKOFFICE 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. 11/222,232 09/09/2005 Kazuhito Miyake 050584 5280 23850 7590 05/25/2012 KRATZ, QUINTOS & HANSON, LLP 1420 K Street, N.W. 4th Floor WASHINGTON, DC 20005 EXAMINER SHEWAREGED, BETELHEM ART UNIT PAPER NUMBER 1785 MAIL DATE DELIVERY MODE 05/25/2012 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 KAZUHITO MIYAKE ________________ Appeal 2010-009572 Application 11/222,232 Technology Center 1700 ________________ Before ADRIENE LEPIANE HANLON, PETER F. KRATZ, and MARK NAGUMO, Administrative Patent Judges. NAGUMO, Administrative Patent Judge. DECISION ON APPEAL Appeal 2010-009572 Application 11/222,232 2 A. Introduction1 Kazuhito Miyake (“Miyake”) timely appeals under 35 U.S.C. § 134(a) from the final rejection2 of claims 1, 3, 4, 7-11, and 15.3 We have jurisdiction. 35 U.S.C. § 6. We AFFIRM. The subject matter on appeal relates to electrophotographic image- receiving sheets that are said to have excellent image fixing properties and cracking resistance. (Spec. 1, ll. 7-8.) The improvement is said to arise from the use of a polymer layer having voids (id. at 2, ll. 7-9), provided the voids are not in the outermost polymer layer (id. at 3, ll. 20-21). In the embodiment claimed, the voids are provided by adding particles having voids to the polymer layers. (Id. at 4, l. 13.) Representative Claim 1 reads: 1. An electrophotographic image-receiving sheet, comprising: a support, and at least two polymer layers disposed on the support, wherein at least one of the polymer layers has voids formed by hollow particles, and wherein the voids are formed in the polymer layers except an outermost polymer layer. (Claims App., Br. 11; indentation, paragraphing, and emphasis added.) 1 Application 11/222,232, Electrophotographic Image-Receiving Sheet and Image-Forming Method Using the Same, filed 9 September 2005, claiming the benefit of an application filed in Japan on 10 September 2004. The specification is cited as “Spec.” The real party in interest is listed as Fuji Photo Film Co., Ltd. (Appeal Brief, filed 15 January 2010 (“Br.”), 1.) 2 Office action mailed 24 April 2009 (“Final Rejection”; cited as “FR”). 3 Copending claims 12-14 have been withdrawn from consideration and are not before us. (FR 1; Br. 2.) Appeal 2010-009572 Application 11/222,232 3 The Examiner maintains the following grounds of rejection:4 A. Claims 1, 4, 7-10, and 15 stand rejected under 35 U.S.C. § 103(a) in view of the combined teachings of Takehana5 and Nakanishi.6 B. Claims 1, 3, 4, 7-11, and 15 stand rejected under 35 U.S.C. § 103(a) in view of the combined teachings of Tani7 and Nakanishi. B. Discussion Findings of fact throughout this Opinion are supported by a preponderance of the evidence of record. As the Appellant, Miyake bears the procedural burden of showing harmful error in the Examiner’s rejections. See, e.g., Shinseki v. Sanders, 556 U.S. 396, 409-10, 129 S.Ct. 1696, 1706 (2009) (citations omitted) (“Lower court cases make clear that courts have correlated review of ordinary administrative proceedings to appellate review of civil cases in this respect. . . . [T]he party seeking reversal normally must explain why the erroneous ruling caused harm.”) See also, In re Chapman, 595 F.3d 1330, 1338 (Fed. Cir. 2010) (discussing the role of harmless error in appeals from decisions of the Board of Patent Appeals and Interferences (“Board”)). 4 Examiner’s Answer mailed 2 March 2010 (“Ans.”). 5 Tadashi Takehana et al., Electrophotographic Image-Receiving Film, U.S. Patent 5,885,698 (1999). 6 Ryosuke Nakanishi et al., Electrophotographic Transfer Paper, U.S. Patent 6,280,830 B1 (2001). 7 Yoshio Tani et al., Electrophotographic Image-Receiving Sheet and Process for Image formation Using the Same, U.S. Patent Application Publication 2003/0224192 A1 (2003). Appeal 2010-009572 Application 11/222,232 4 Arguments not timely made have been waived. 37 C.F.R. § 41.37(c)(1)(vii) (second sentence); see also In re Hyatt, 211 F.3d 1367, 1373 (Fed. Cir. 2000) (an argument not first raised in the brief to the Board is waived on appeal). Initially, we find that Miyake presents arguments for patentability based solely on claim 1. (Br. 7-9.) Accordingly, all claims stand or fall with claim 1. 37 C.F.R. § 41.37(c)(1)(vii) (2007). With respect to both rejections, Miyake argues that the Examiner erred in relying on Nakanishi for evidence that the use of hollow particles as pigments would have been obvious in the electrophotographic imaging films described by Takehana, or in the electrophotographic image receiving sheets described by Tani. According to Miyake, Nakanishi only teaches electrophotographic transfer papers in which the hollow pigment particles are included in the outermost polymer layer. (Br. 8, 1st para.) Miyake argues that the deficiencies of Nakanishi “are not supplied” by either Takehana or Tani. (Id. at 8, 3d para.; id. at 9, 2d full para.) In neither case, however, does Miyake explain what factual errors the Examiner made regarding the teachings of any of the references. Miyake argues further that “one of ordinary skill in the art would not be [sic: have been] led to combine the teachings of the [applied references] . . . in the manner which the examiner has done.” (Id. at 8, last para.; id. at 9, 3d full para.) Again, however, Miyake has not explained what facts in each reference weigh against the way the Examiner combined the cited teachings. Nor has Miyake explained what errors of logic the Examiner may have made in combining the references. Appeal 2010-009572 Application 11/222,232 5 This is not a case in which the Examiner merely pointed broadly at the applied prior art references and made sweeping general findings. Rather, the Examiner identified specific teachings in the references, and then argued why it would have been obvious to combine the teachings, and why those combined teachings resulted in an embodiment within the scope of the appealed claims. (FR 2-6; Ans. 3-7, essentially repeating the rejections of record.) In these circumstances, Miyake’s arguments amount to no more than an invitation to the Board to make findings of fact about what the references teach, and to agree with Miyake that the Examiner’s legal conclusion of obvious is in error and must be reversed. This misconstrues our role as an appellate tribunal. Cf. In re Mayne, 104 F.3d 1339, 1344 (Fed. Cir. 1997) (“Even were it obvious to a practitioner of the art [that the results were unexpected], applicants have the burden to provide the PTO with evidence showing such is the case.”; In re Baxter Travenol Labs., 952 F.2d 388, 391 (Fed. Cir. 1991) (“It is not the function of this court to examine the claims in greater detail than argued by an appellant, looking for nonobvious distinctions over the prior art.). Because Miyake has failed to demonstrate harmful error in the Examiner’s rejections, we AFFIRM. C. Order We AFFIRM the rejection of claims 1, 4, 7-10, and 15 stand rejected under 35 U.S.C. § 103(a) in view of the combined teachings of Takehana and Nakanishi. Appeal 2010-009572 Application 11/222,232 6 We AFFIRM the rejection of claims 1, 3, 4, 7-11, and 15 stand rejected under 35 U.S.C. § 103(a) in view of the combined teachings of Tani and Nakanishi. No time period for taking any subsequent action in connection with this appeal may be extended under 37 C.F.R. § 1.136(a). AFFIRMED sld