Ex Parte Suzumura et al

Patent Trial and Appeal Board

Jul 21, 2016

14019490 (P.T.A.B. Jul. 21, 2016)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE
14/019,490 09/05/2013
5514 7590 07/22/2016
FITZPATRICK CELLA HARPER & SCINTO
1290 A venue of the Americas
NEW YORK, NY 10104-3800
FIRST NAMED INVENTOR
Noriko Suzumura
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.
03500.209884. 7540
EXAMINER
TALBOT, BRIAN K
ART UNIT PAPER NUMBER
1715
MAILDATE DELIVERY MODE
07/22/2016 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 PATENT TRIAL AND APPEAL BOARD
Ex parte NORIKO SUZUMURA, NORIYUKI DOI,
HIROKI MASU, MASATAKA KODAMA, MASAHIRO KURACHI,
and NORIAKI KURODA
Appeal2016-004937
Application 14/019 ,490
Technology Center 1700
Before ROMULO H. DELMENDO, MICHAEL P. COLAIANNI, and
WESLEY B. DERRICK, Administrative Patent Judges.
COLAIANNI, Administrative Patent Judge.
DECISION ON APPEAL
Appeal2016-004937
Application 14/019 ,490
Appellants appeal under 35 U.S.C. § 134 the final rejection of claims
1 to 5. Claims 6 and 7 have been withdrawn from consideration by the
Examiner as being drawn to a non-elected invention (Final Act. 2). We have
jurisdiction over the appeal pursuant to 35 U.S.C. § 6(b ). Oral arguments
were heard in this appeal on July 12, 2016.
We REVERSE.
Appellants' invention is directed to a method of producing a member
for electrophotography comprising an electroconductive support, an elastic
layer, and a surface layer (Spec. i-f 2; claim 1 ). Appellants disclose that
present invention provides a polysiloxane coating liquid which is suppressed
from clouding or causing a precipitate and which can suppress the coating
unevenness upon formation of a coat (Spec. i-f 6). Claim 1 requires the step
of forming on the surface of the elastic layer a surface layer formed from a
coating liquid containing a hydrolyzed condensate of a hydrolysable silane
compound represented by formula ( 1) and a chelate titanium compound
represented by formula (2) in claim 1.
Claim 1 is illustrative:
1. A method of producing a member for electrophotography
comprising an electro-conductive support, an elastic layer, and a surface
layer, the method comprising:
a first step of forming, on a surface of the elastic layer, a coat of a
surface-layer coating liquid containing a hydrolyzed condensate of a
hydrolyzable silane compound represented by the following general formula
(1) and a chelate titanium compound represented by the following general
formula (2); and
a second step of crosslinking the hydrolyzed condensate in the coat
through cleavage of an epoxy group in the hydrolyzed condensate to form
the surface layer:
2
Appeal2016-004937
Application 14/019 ,490
R) S'"' . . ·1 ....... .. l
t==O 0---&.
\\ I
/
Ti\
\ --o o--..;r
in the general formula (1 ), Ri represents a hydrocarbon group
represented by any one of the following general formulae (3) to (6), and R2
to R4 each independently represent a hydrocarbon group;
in the general formula (2), Rs and R6 each independently represent a
linear or branched alkyl group having 1 or more and 20 or less carbon atoms,
and R7 to Rio each independently represent a hydrogen atom, an alkyl group
having 1 or more and 3 or less carbon atoms, or an alkoxy group having 1 or
more and 3 or less carbon atoms;
3
Appeal2016-004937
Application 14/019 ,490
4
Appeal2016-004937
Application 14/019 ,490
in the general formulae (3) to (6):
5
Appeal2016-004937
Application 14/019 ,490
R11 to K13, R16 to R1s, R23, R24, R29, and K30 each independently
represent a hydrogen atom, an alkyl group having 1 or more and 4 or less
carbon atoms, a hydroxyl group, a carboxyl group, or an amino group;
Ri4, Ris, Ri9 to R22, R27, R2s, and R33 to R36 each independently
represent a hydrogen atom or an alkyl group having 1 or more and 4 or less
carbon atoms;
R2s, R26, R31, and R32 each independently represent a hydrogen atom,
an alkoxyl group having 1 or more and 4 or less carbon atoms, or an alkyl
group having 1 or more and 4 or less carbon atoms; and
n, m, 1, q, s, and t each independently represent an integer of 1 or
more and 8 or less, p and r each independently represent an integer of 4 or
more and 12 or less, and"*" represents a bonding position with a silicon
atom in the general formula ( 1).
Appellants appeal the following rejection:
Claims 1-5 are rejected under 35 U.S.C. § 103(a) as obvious over Kuroda et
al. (US 2011/0217072 Al, Sept. 8, 2011) ("Kuroda") or Kuruma et al. (WO
2006/070847 Al, published July 6, 2006) ("Kuruma") in view of Matsusaki
et al. (US 2012/0288300 Al, published Nov. 15, 2012) ("Matsusaki") or Wu
et al. (US 6,967,069 B2, issued Nov. 22, 2005) ("Wu").
FINDINGS OF FACT & ANALYSIS
The Examiner's findings and conclusions regarding Kuroda, Kuruma,
Matsusaki, and Wu are located on pages 3 to 5 of the Final Action. The
Examiner finds that Kuroda and Kuruma generally teach the method of
claim 1, except for the use of the chelate of titanium (Final Act. 3--4). The
Examiner finds that Matsusaki or Wu teaches using titanium chelate
compounds in photoconductors (Final Act. 4--5). The Examiner concludes
that it would have been obvious to have modified Kuroda's or Kuruma's
photoconductor to include a condensation reaction with a titanium chelate as
evidenced by Matsusaki or Wu to achieve "the advantages associated
therewith" (Final Act. 5).
6
Appeal2016-004937
Application 14/019 ,490
Appellants argue that the Examiner's reason for combining the chelate
of titanium of Matsusaki or Wu with either Kuroda or Kuruma is conclusory
and insufficient to satisfy an explicit analysis required for making the
combination of the prior art (App. Br. 11 ). Appellants contend that
Matsusaki teaches an electrophotographic photoconductor comprised of a
conductive support, an intermediate layer and photosensitive layer (App. Br.
11-12). Appellants argue that Matsusaki's intermediate layer is disclosed as
having sufficient electron transportability and a sufficient blocking property
such that both unevenness in image density and image defects such as
fogging and dots are reduced in a photosensitive member not a charging
member (App. Br. 12). Appellants contend that Matsusaki achieves these
results for its photoconductor by using metal oxide particles surface-treated
with a titanium chelate compound in the intermediate layer. Id. Appellants
argue that Matsusaki' s titanium chelate is used specifically for the treatment
of metal oxide particles in an intermediate layer of a photosensitive member
and such a teaching would not have suggested using titanium chelate in
Kuroda's or Kuruma's surface layer of a charging member where metal
oxide particles are not included. Id.
Regarding Wu, Appellants argue that Wu discloses a
photoconductive imaging member comprising a hole blocking layer, a
photogenerating layer, and a charge transport layer (App. Br. 13).
Appellants argue that Wu's "hole blocking layer contains a metal oxide
dispersed in an inorganic/organic network where the inorganic component
can be an organic titanate such as a titanium chelate compound." Id.
Appellants contend that Wu teaches that the titanium chelate compound
allows for an optimal thickness and rapid cooling of the hole blocking layer
7
Appeal2016-004937
Application 14/019 ,490
that results in increased photo-induced discharge characteristics for the
imaging member (App. Br. 13). Appellants contend that there is no reason
for using Wu's titanium chelate compound used in a photosensitive member
in Kuroda's or Kuruma's surface layer of a charging member as Wu only
instructs to use the titanium chelate in a hole blocking layer in a
photosensitive member. Id. Appellants also contend that Wu discloses that
titanium chelate that is polymerized as part of a phenolic resin so that the
Wu's organic titanate compound is inseparable from the phenolic resin or
phenolic compound. Id.
The preponderance of the evidence favors Appellants' argument of
non-obviousness. The Examiner's response to Appellants' arguments is that
the claim is open-ended and does not exclude Matsusaki' s metal oxide
particles or Wu's phenolic resin (Ans. 4--5). The Examiner's response does
not address Appellants' argument that there is no reason to combine
Matsusaki's or Wu's titanium chelate material that is tied to the metal oxide
particles of the intermediate layer or phenolic resin of a hole blocking layer,
respectively, with Kuroda's or Kuruma's surface layer. Although, the
Examiner finds that there are benefits to using Matsusaki's or Wu's titanium
chelate, the Examiner has not explained why those benefits for an
intermediate or hole blocking layer in a photosensitive member would have
been desired or reasonably expected when used in Kuroda's or Kuruma's
surface layer of a charging member.
Because the Examiner has not dispensed with the initial burden of
establishing a prima facie case of obviousness, we reverse the Examiner's
§ 103 rejection.
8
Appeal2016-004937
Application 14/019 ,490
DECISION
The Examiner's decision is reversed.
ORDER
REVERSED
9