Ex Parte Nelson et al

Patent Trial and Appeal Board

Mar 11, 2019

14442072 (P.T.A.B. Mar. 11, 2019)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE
14/442,072 05/11/2015
22879 7590 03/13/2019
HP Inc.
3390 E. Harmony Road
Mail Stop 35
FORT COLLINS, CO 80528-9544
FIRST NAMED INVENTOR
Eric G. Nelson
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.
84246779 8990
EXAMINER
AYDIN, SEVAN A
ART UNIT PAPER NUMBER
2852
NOTIFICATION DATE DELIVERY MODE
03/13/2019 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 ERIC G. NELSON, BRUCE J. JACKSON, and
STANLEY D. MORSE
Appeal2018-003966
Application 14/442,072
Technology Center 2800
Before CATHERINE Q. TIMM, ROMULO H. DELMENDO, and
LILAN REN, Administrative Patent Judges.
DELMENDO, Administrative Patent Judge.
DECISION ON APPEAL
The Applicant ("Appellant") 1 appeals under 35 U.S.C. § 134(a) from
the Primary Examiner's final decision to reject claims 1 and 5. 2 We have
jurisdiction under 35 U.S.C. § 6(b).
We affirm.
1 The Appellant is the Applicant, Hewlett-Packard Development Company,
L.P. ("HPDC") (Application Data Sheet filed May 11, 2015, 5), which,
according to the Brief, is the real party in interest ( Appeal Brief filed
September 8, 2017 ("Appeal Br."), 1). The Brief further states that "HPDC
is a Texas limited partnership and is a wholly-owned affiliate of HP Inc."
and that "[ t ]he general or managing partner of HPDC is HPQ Holdings,
LLC" (id.).
2 Appeal Br. 2-11; Reply Brief filed February 22, 2018 ("Reply Br."), 1-3;
Final Office Action entered June 15, 2017 ("Final Act."), 3 (referring to
Non-Final Office Action entered February 24, 2017 ("Non-Final Act."), 3-9;
Examiner's Answer entered December 26, 2017 ("Ans."), 2-7.
Appeal2018-003966
Application 14/442,072
I. BACKGROUND
The subject matter on appeal relates to a printer (Specification filed
May 11, 2015 ("Spec."), Abstract). Figure 1 (annotated), which illustrates
an embodiment, is reproduced from the Drawings filed May 11, 2015, as
follows:
FIG. l
Figure 1 above shows a liquid electro-photographic (LEP) printer 10
including, inter alia: a photo imager 16 (e.g., a scanning laser) that exposes
light on photoconductor 12 in select areas to form a pattern for a desired
printed image; a developer 18 to provide a thin layer of liquid toner on the
patterned photoconductor 12 to develop a toner image; an intermediate
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Application 14/442,072
transfer drum 20 onto which the toner image is transferred from the
photoconductor 12 and then for transferring the image onto paper substrate
22; and a fixer 30 provided with infrared (IR) lamps 34 to heat polymers in
the toner to soften and flow, wherein exposed polymer functional groups
increase adhesion to the substrate 22 (id. ,r,r 1, 2, 15-18, 20).
Representative claim 1 is reproduced from the Claims Appendix to the
Appeal Brief, as follows:
1. A printer, comprising:
a photoconductor;
an imager to form a pattern of a desired image on the
photo conductor;
an image developer to apply liquid toner to the
photo conductor;
a transfer member to transfer a toner image from the
photoconductor to a print substrate; and
a fixer configured to increase adhesion of the toner image
to the print substrate without pressure, the fixer including an
infrared lamp to heat the toner image on the print substrate to a
peak temperature of 100°C - 150°C in 250ms - 40ms where the
time to temperature decreases as the temperature increases.
(Appeal Br. 12; emphasis added.)
II. REJECTIONS ON APPEAL
On appeal, the Examiner maintains rejections under pre-AIA 35
U.S.C. § I03(a) of: claim 1 as unpatentable over Nakamura et al. 3
("Nakamura"), Buchan et al. 4 ("Buchan"), and Sacripante et al. 5
("Sacripante"); and claim 5 as unpatentable over these same references
3 US 2003/0186148 Al, published October 2, 2003.
4 US 4,015,027, issued March 29, 1977.
5 US 2010/0285401 Al, published November 11, 2010.
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Application 14/442,072
further in view ofNbedi et al. 6 ("Nbedi") (Ans. 2-7; Final Act. 3-5; Non-
Final Act. 3-7.)
III. DISCUSSION
The Appellant argues both rejections together (Appeal Br. 2-11).
Therefore, we confine our discussion to the rejection as maintained against
claim 1. That discussion will control our decision as to both rejections.
The Examiner finds that Nakamura describes a printer comprising a
photoconductor, an imager, an image developer to apply a liquid toner to the
photoconductor, a transfer member to transfer the resulting toner image to a
print substrate, and a fixer (Non-Final Act. 4). The Examiner states that
Nakamura does not disclose a fixer as specified in claim 1 (id.). The
Examiner finds, however, that Buchan teaches that commonly-used
electrophotographic toners melt at about 90-130°C and that Sacripante
teaches the heat flux from infrared lamps is a result-effective variable that
affects quickness with which the toner is fused (id.). Based on these
findings, the Examiner concludes that "[i]t would have been obvious to one
having ordinary skill in the art ... to melt wet toner at a particular
temperature" and that "[ o ]ne having ordinary skill ... would have done so in
order to improve the efficiency of the printer using a particular toner with a
particular melting temperature" (id. at 5).
The Appellant does not dispute the Examiner's findings that
Nakamura describes a printer comprising a photoconductor, an imager, an
image developer for applying toner to the photoconductor, a transfer
member to transfer the resulting toner image to a print substrate, and a fixer
6 US 5,055,884, issued October 8, 1991.
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Application 14/442,072
(Appeal Br. 2-11; Non-Final Act. 4). Rather, the Appellant's principal
contention focuses on the prior art fixer's operational parameters (id. at 5-6).
Specifically, the Appellant argues that although Nakamura teaches fusing
dry toner without pressure using infrared light to radiate optical energy at 2-
7 J/cm2, it does not disclose any peak temperature, time to peak temperature,
or a relationship between peak temperature and time to peak temperature as
specified in claim 1, and that none of the other references bridge this gap
(id.). In addition, the Appellant argues that "Nakamura does not teach
anything at all about a wet toner development system in general, and
particularly not a 'liquid toner' system as specially defined" (id.). With
respect to Buchan, the Appellant points out that "Buchan teaches that in
1975 'most commonly used' dry toners melted at about 90°C to 130°C"
(id.). With respect to Sacripante, the Appellant argues that although
"Sacripante teaches non-contact fusing dry toner by exposing the toner to
infrared light for about 20ms-4,000ms" (id.), it "does not specify whether
these times refer to the total exposure time, the time to reach a peak
temperature, or the time to maintain a peak temperature" (id.). Furthermore,
the Appellant argues that the peak temperatures, times to peak temperature,
and the relationship between the peak temperature and time to peak
temperature recited in claim 1 solve a problem (id. at 4). According to the
Appellant, the data in Figures 3---6 provide evidence that these specified
parameters give rise to unexpected results (id. at 4, 6-11 ).
The Appellant's arguments fail to identify any reversible error in the
Examiner's rejection. In re Jung, 637 F.3d 1356, 1365 (Fed. Cir. 2011).
Nakamura describes a printer provided with means for flash fixing 80
(i.e., flash lamp(s)), which irradiate a visible image transferred onto a
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Application 14/442,072
recording medium with infrared light (Nakamura ,r,r 163-172; Fig. 1).
According to Nakamura, the development unit holds and supplies color toner
for electrophotography to the electrostatic latent image in a contact or non-
contact manner and that this unit may be a dry development or wet
development system ( id. ,r,r 151-15 2). Thus, contrary to the Appellant's
position, a person having ordinary skill in the art would have drawn a
reasonable inference7 that Nakamura's wet development system holds and
supplies a wet toner system. Nakamura further teaches that the optical
energy for flashing is preferably about 1 to 3 J/cm2 per color, and"[ w ]hen
images of four colors are fixed all together, the optical energy is preferably
about 2 to 7 J/cm2" (id. ,r 165).
As recited in reproduced claim 1 above, the claimed subject matter is
directed to a printer (i.e., an apparatus) provided with, inter alia, "a fixer
configured to" carry out a certain function under specified operational
parameters without any limitation as to the materials that are worked upon
by the printer. Given that the energy ( and thus the temperature) and the
rapidity for heating are dependent on the substrate's (i.e., paper's) nature
(Spec. ,r 20; Drawings, Fig. 6) and, as the Examiner points out (Ans. 5), the
toner particles that are selected to be melted-i.e., the materials to be
worked upon by the apparatus, it would reasonably appear that the prior art
fixer would be capable of raising the temperature to the specified peak
temperatures in the specified times depending on the nature of the selected
substrate and toner particles being processed. The Appellant points to no
7 In re Preda, 401 F.2d 825, 826 (CCPA 1968) ("[I]n considering the
disclosure of a reference, it is proper to take into account not only specific
teachings of the reference but also the inferences which one skilled in the art
would reasonably be expected to draw therefrom.")
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Application 14/442,072
evidence demonstrating the contrary. See, e.g., In re Schreiber, 128 F.3d
1473, 1477 (Fed. Cir. 1997) (citing, e.g., In re Sinex, 309 F.2d 488, 492
(CCPA 1962)).
Moreover, Nakamura teaches that "[i]f the optical energy falls short of
the numerical value range, the fixing may not be carried out favorably" and
"[ o ]n the other hand, if it exceeds the numerical value range, a toner void, a
bum of paper, and the like may occur" (id. ,r 166). Also, in the
"Experiment" section, Nakamura discusses the relationship between flash
fixing energy versus fixability and void resistance (id. ,r 232). Thus, a
person having ordinary skill in the art would have drawn a reasonable
inference that the optical energy, and correspondingly the peak temperature,
is a result-effective variable that affects fixing quality and void resistance.
In re Applied Materials, Inc., 692 F.3d 1289, 1297 (Fed. Cir. 2012) ("A
recognition in the prior art that a property is affected by the variable is
sufficient to find the variable result-effective.").
Indeed, although Buchan appears to be directed to a dry toner system,
it teaches that commonly used electrophotographic toners melt at about 90-
1300C (col. 9, 11. 27-31). Because the fixing energy (and thus the
temperature) is a result-effective variable, a person having ordinary skill in
the art would have determined by routine experimentation an optimum range
of energy levels ( and thus temperatures) to achieve sufficient fixability and
void resistance. Id. ("[A] claim ... does not become nonobvious simply
because the [applicant's] specification provides a more comprehensive
explication of the known relationships between the variables and the
affected properties").
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As for the "time to temperature" limitations recited in claim 1, we find
the Examiner's analysis to be sound (Ans. 5). As the Examiner finds, the
time to reach a suitable temperature for fixing would affect the speed and
time for the printing operation, as evidenced by Sacripante' s teaching that
"[ f]aster [conveyance] speeds could be used with additional lamps"
(Sacripante ,r 139), and that, consequently, "by applying more heat to melt
faster, the user waits less for printing to finish" (Ans. 5). Based on these
findings, we discern no reversible error in the Examiner's determination that
a person having ordinary skill in the art would have arrived at suitable times
to reach peak temperature to carry out the printing operation efficiently and
quickly for a given substrate and toner system.
Regarding the Appellant's argument that Figures 3---6 provide
evidence of unexpected results, we discern no reversible error in the
Examiner's assessment of the proffered data (Ans. 6-7). The Appellant does
not direct us to sufficient evidence that a person having ordinary skill in the
art would have considered the results to be unexpected over the prior art. In
re Klosak, 455 F.2d 1077, 1080 (CCPA 1972) (explaining that the burden of
analyzing and explaining data to support an argument of unexpected results
rests on the applicant). See also In re Harris, 409 F.3d 1339, 1344 (Fed.
Cir. 2005) ("The 32--43% increase in stress-rupture life ... does not
represent a 'difference in kind' that is required to show unexpected
results.").
Moreover, Figures 4 and 6 demonstrate that the operational
parameters depend on the substrate's nature such as thickness and weight.
Claim 1 does not recite a substrate as part of the printer, let alone a substrate
having specific properties. Rather, the claim recites a substrate only as a
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material that is to be worked upon by the printer. The Appellant points to no
evidence that Nakamura's printer cannot be operated under the processing
parameters recited in claim 1 for a suitably selected substrate that would
accommodate such operating parameters.
For these reasons, we uphold the Examiner's rejections.
IV. SUMMARY
The Examiner's rejections are sustained. Therefore, the Examiner's
final decision to reject claims 1 and 5 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(a).
AFFIRMED
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