Ex Parte Wu et al

Patent Trial and Appeal Board

Feb 9, 2018

14093597 (P.T.A.B. Feb. 9, 2018)

United States Patent and Trademark Office
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.
14/093,597 12/02/2013 Jin Wu 20130790-US-NP 1788
88971 7590 02/13/2018
Hoffman Warniok T T .P
EXAMINER
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ENGLISH, PATRICK NOLAND
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1787
NOTIFICATION DATE DELIVERY MODE
02/13/2018 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
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PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte JIN WU, DAVID JOSEPH GERVASI,
MATTHEW MICHAEL KELLY, and QI YING LI
Appeal 2017-004559
Application 14/093,597
Technology Center 1700
Before TERRY J. OWENS, JENNIFER R. GUPTA, and
DEBRA L. DENNETT, Administrative Patent Judges.
DENNETT, Administrative Patent Judge.
DECISION ON APPEAL1
STATEMENT OF THE CASE
Appellant2 appeals under 35 U.S.C. § 134(a) from a rejection of
claims 1-20. We have jurisdiction under 35 U.S.C. § 6(b).
We AFFIRM.
1 In our Opinion, we refer to the Specification filed December 2, 2013
(“Spec.”); the Final Action mailed April 12, 2016 (“Final Act.”); the
Advisory Action mailed June 28, 2016 (“Adv. Act.”); the Appeal Br. filed
August 22, 2016 (“Appeal Br.”); the Examiner’s Answer mailed
November 25, 2016 (“Ans.”); and the Reply Brief filed January 24, 2017
(“Reply Br.”).
2 Appellant is the Applicant, Xerox Corp. BIB Data Sheet.
Appeal 2017-004559
Application 14/093,597
The subject matter on appeal relates to “fuser members useful in
electrophotographic imaging apparatuses.” Spec. 1. In the
electrophotographic printing process, a fuser member can be used to fix or
fuse a toner image on a support such as a paper sheet. Id. ^f 3. Fillers may
be incorporated into polymeric materials in fuser members. Id.
Claim 1, reproduced below, is illustrative of the claimed subject
matter:
1. A fuser member comprising:
a substrate layer comprising a polyimide having
dispersed therein a plurality of poly(p-phenylene
benzobisoxazole) fibers, wherein the poly(p-phenylene
benzobisoxazole) is represented by:
REFERENCES
The Examiner relies on the following prior art in rejecting the claims
on appeal:
Deguchi et al. US 2002/0106510 A1 Aug. 8, 2002
(“Deguchi”)
Chen et al. US 2007/0265379 Al Nov. 15, 2007
(“Chen”)
Wu et al. US 2012/0052306 Al Mar. 1, 2012
(“Wu”)
REJECTIONS
The Examiner maintains and Appellants seek review of the following
rejections under 35 U.S.C. § 103: (1) claims 1—4, 7-14, and 17-20 over Wu
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Application 14/093,597
in view of Chen; and (2) claims 5, 6, 15, and 16 over Wu in view of Chen
and further in view of Deguchi. Final Act. 2-8; Appeal Br. 4-7.
OPINION
Appellant argues claims 1-20 as a group. Appeal Br. 4-7. We select
claim 1 as representative of the group. 37 C.F.R. § 41.37(c)(l)(iv).
Accordingly, the remaining claims stand or fall with claim 1.
The Examiner finds that Wu discloses a fuser member comprising a
substrate comprising a polyimide polymer, and that additives and conductive
or non-conductive fillers may be present in the composition. Final Act. 2.
The Examiner acknowledges that Wu does not disclose a conductive filler
comprising poly(p-phenylene benzobisoxazole) (“PPBBS”) fibers, but finds
that Chen cures this deficiency. Id. at 3. Specifically, the Examiner finds
that Chen teaches carbon nanotube/polymer nanocomposites whose polymer
matrix includes polyimide, and that the nanocomposites can be combined
with a second filler such as Zylon fibers, to form complex nanocomposites.
Id. at 3—4. The Specification describes Zylon fibers as exemplary PPBBS
fibers. Spec. ^ 36. The Examiner concludes that it would have been
obvious to one having ordinary skill in the art at the time of the invention to
have substituted Chen’s complex carbon nanotube-polyimide
nanocomposition comprising Zylon (PPBBS) fibers for the polyimide in Wu
to achieve increased electrical conductivity and improved mechanical
properties in the fuser. Final Act. 4.
Appellant argues that Chen teaches improved electrical properties
only for nanocomposites containing functionalized, solubilized
nanomaterials (or functionalized, solubilized single-walled nanotubes (“f-s-
SWNTs”)), and PPBBS fibers are not included in Chen’s definition of
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functionalized, solubilized nanomaterials. Appeal Br. 4. Appellant contends
that the Examiner improperly concludes the combination of f-s-SWNTs and
PPBBS fibers results in the improved properties. Id. at 5. According to
Appellant, the Examiner’s reasoning would mean that any secondary filler
would result in the listed improved properties, but Chen does not teach that
adding PPBBS fibers to a polymer matrix improves properties. Id.
In response, the Examiner explains that the rejection does not merely
add Chen’s PPBBS fibers into Wu’s polyimide polymer, but rather replaces
the polyimide in Wu’s substrate with Chen’s carbon nanotube/polyimide
nanocomposite comprising PPBBS fibers. Ans. 9. According to the
Examiner, motivation to combine the prior art references is provided by
Chen’s teaching of improved properties in the nanocomposite in its entirety,
which contains PPBBS fibers. Id. at 11-12.
Appellant replies that Chen teaches improvements in the complex
nanocomposites are due to addition of f-s-SWNTs, and the Examiner
provides no evidence that PPBBS fibers improve properties in a fuser
member substrate or a complex nanocomposite. Reply Br. 2-3. Appellant
argues that consideration of Chen would lead one to add f-s-SWNTs to the
fuser matrix of Wu, but such addition would not result in the claimed
invention. Id. at 3.
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).
Appellant is correct that Chen teaches improved properties in the
complex nanocomposite as a result of adding f-s-SWNTs, not PPBBS fibers,
to the nanocomposite. Chen 60 (“Adding f-s-SWNTs to the matrix of a
continuous fiber reinforced nanocomposite results in a complex
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nanocomposite material having improved properties”). However, as detailed
in the Answer, the rejection is based on using a complex nanocomposite
comprising polyimide, f-s-SWNTs, and PPBBS fibers—all as taught by
Chen—in Wu’s fuser member in place of the polyimide in the substrate
layer. The complex nanocomposite has improved properties, even though
the improvement comes from f-s-SWNTs and not from PPBBS fibers.
“[T]he name of the game is the claim.” In re Hiniker Co., 150 F.3d
1362, 1369 (Fed. Cir. 1998) (quoting Giles Sutherland Rich, Extent of
Protection and Interpretation of Claims—American Perspectives, 21 Int'l
Rev. Indus. Prop. & Copyright L. 497, 499 (1990)). What matters in an
obviousness determination is the objective reach of the claim. KSR Int’l Co.
v. Teleflex, Inc., 550 U.S. 398, 419 (2007). Here, the reach of claim 1 is
broad enough to encompass Chen’s complex nanocomposite.
Appellant chose to employ the open transitional term “comprising” in
claim 1, which permits elements in addition to those specified to be included
in the fuser member. In re Crish, 393 F.3d 1253, 1257 (Fed. Cir. 2004). In
the instant rejection, the elements in addition to the polyimide comprising
PPBBS fibers include f-s-SWNTs. Appellant provides no reason why
inclusion of such elements is not permitted.
One of ordinary skill in the art need not see the identical problem
addressed in Chen to be motivated to apply its teachings. Cross Med.
Prods., Inc. v. Medtronic Sofamor Danek, Inc., 424 F.3d 1293, 1323 (Fed.
Cir. 2005). Although Chen ascribes the improved properties to f-s-SWNTs,
the complex nanocomposite clearly has the benefit of those improved
properties. Motivation to combine references exists when a suggestion
comes from the prior art as a whole as well as when the combination of
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references results in a product or process that is more desirable. Dystar
Textilfarben GmbH & Co. Deutschland KG v. C.H. Patrick Co., 464 F.3d
1356, 1368 (Fed. Cir. 2006).
In view of the foregoing, we sustain the rejection of claim 1 over Wu
in view of Chen. Appellant does not provide additional argument for the
patentability of claims 2-20, therefore, we also sustain the rejection of
claims 2-20 over the various references.
DECISION
For the above reasons, the Examiner’s rejections of claims 1-20 are
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)(l)(iv).
AFFIRMED
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