
    376 F. 2d 325; 153 USPQ 451
    In re Martha Tomanek, nee Kunitzer
    (No. 7692)
    United States Court of Customs and Patent Appeals,
    May 4, 1967
    
    
      James B. Bryan for appellant.
    
      Joseph Sehimmel (Jach B. Armore, of counsel) for the Commissioner of Patents.
    [Oral argument November 0, 1966 by Mr. Bryan and Mr. Armore]
    Before Worley, Chief Judge, Rich, Smith, Almond, Associate Judges, and William H. Kirkpatrick
    
    
      
      Petition for rehearing denied July 17, 1967.
    
    
      
      Senior District Judge, Eastern District of Pennsylvania, sitting by designation.
    
   Worley, Chief Judge,

delivered the opinion of the court:

This appeal is from the decision of the Board of Appeals affirming the examiner’s rejection of composition claims 1-9 and process claims 10-12 and 14-19 in appellant’s application entitled “Developer for Electrostatic Latent Images.”

The application describes and claims a method of, and compositions for, developing and electrostatic latent image. According to the specification and record, such an image is formed by uniioi’mly charging (by corona discharge, for example) a photoconductive insulating layer in the dark, then photographically exposing the charged layer to a light pattern. Where light strikes, the photoconductive layer becomes conductive and the charges in that area “leak” away in proportion to the intensity of illumination, leaving an electrostatic latent image in the non-illuminated areas. It appears that the image is commonly “developed” by applying compositions including “toner” powders which temporarily adhere to larger “carrier” particles and bear a charge of polarity opposite to that of the latent image. The “toner” powder is electrostatically attracted to image areas of opposite charge whereafter it may be permanently affixed, for example, by heating. The heavier “carrier” particles roll away under gravity forces.

According to appellant, the known developers “have the disadvantage that they do not uniformly develop image portions covering rather large areas, but are deposited only around the edges leaving the inside portions of such areas to all intents and purposes undeveloped.” To solve that problem, appellant employs a so-called “double toner,” as reflected in composition claim 1 and process claim 10:

1. A developer for electrostatic latent images consisting of a mixture of effective amounts of at least one organic resinous toner capable of acquiring a positive charge and at least one inorganic toner, of approximately the same effective particle size, capable of acquiring a negative charge, the charges acquired by the toners being not in excess of about 10 volts.
10. A method of developing an electrostatic latent image which comprises applying to the image a mixture consisting of effective amounts of at least one organic, resinous toner having a positive charge and at least one inorganic toner, of approximately the same effective particle size, having a negative charge, the charges on the toners being not in excess of about 10 volts. [Emphasis supplied]

According to the specification, the “double toner” is applied to the electrostatic image “in known manner.” The positively charged, fusible, organic, toner materials are drawn to image areas of negative charge where they are fixed by heat. The negatively charged inorganic materials adhere temporarily to image areas of no charge from which they may easily be removed, provided that the fixing temperature is maintained low enough to prevent melting of the photocon-ductive insulating layer. According to appellant, the claimed “double toners” are advantageous because “they are capable of developing large areas and do not adhere merely to the edges of the image.”

The examiner rejected the claims as unpatentable over the following prior art references:

Carlson I_ 2,221,776 Nov. 19,1940
Carlson II_ 2,297,691 Oct. 6,1942
Carlson III_____ 2,940,934 June 14,1960
Sugarman_ 2, 758, 939 Aug. 14,1956
Wielieki___ 2,986,521 May 30,1961
Bixby .-____ 3,013,890 Dec. 19,1961
(Filed July 8, 1958)

It is evident that the Patent Office regards Bixby as the principle reference against claims 1 and 10, the board agreeing with the examiner that Bixby “substantially” or “fully” meets the terms of those claims. The remaining references are mainly employed to demonstrate that certain specific developer materials recited in other claims were known in the art. Appellant argues here:

* * * There is only one reference which relates to * * * a “double toner”, i.e., the patent to Bixby, * * * but the present invention distinguishes from * * * Bixby in two very important respects: (1) In Bixby it is essential to use a carrier whereas no carrier is employed in the developer of the present invention, and (2) one component of the “double toner” of the present invention is inorganic and, therefore infusible, whereas both toner components of the Bixby developer are organic and, therefore, fusible.

The examiner and board did not agree with appellant’s characterization and interpretation of the Bixby disclosure, nor do we. With respect to argument (1) of appellant, it is true that the present claims, reciting a “developer * * * consisting of a mixture of * * * one organic resinous toner capable of acquiring a positive charge and * * * one inorganic toner * * * capable of acquiring a negative charge,” verbally distinguish over those portions of Bixby’s disclosure relating to the inclusion of “carrier” 'particles in his mixture of positively charged and negatively charged toner particles. However, as the examiner and board correctly point out, Bixby need not include carrier particles in his developer composition, but can use bristles of a brush, drum surfaces or sheet surfaces as “carriers” for application of the toner mixture to the latent image. While appellant does not directly controvert that finding of fact, she contends the present claims not only exclude the presence or use of particulate carriers but also exclude any “carrier,” even the brush, drum or sheet “carrier” surfaces employed by Bixby. The examiner and board did not find that to be the case, and appellant’s arguments here do not convince us of error in that decision.

The Board also found Bixby to disclose mixtures of positively and negatively chargeable toners without particulate carriers:

* * * in column 8, lines 35 to 46, describing hopper 25 containing a mixture of positively and negatively charged toners 26, and similarly in column 10, lines 1 to 21, describing a supply of a toner mixture 36 in réservoir 35, Bixby clearly teaches compositions which do not contáin the argued carriers.
We are also in agreement with the Examiner’s position as to method claims 10, 11, 12 and 14 to 19. The term “comprises applying” does not preclude the Bixby expedient of applying the mixed toner particles, which have been given their positive or negative charge by means of nonparticulate carriers such as belts or drums. These embodiments of Bixby in our opinion fully meet the terms of appellant’s claims.

That appellant’s present construction of the claims is primarily an advocate’s afterthought is further demonstrated by the disclosure of the specification, earlier quoted, that the toner mixture is applied to the latent image in “known manner.” While it is not at all clear from the specification what “known manner” of distributing the toner mixture over the image is contemplated, it is evident that the use of a brush, drum or sheet, each of which is shown by Bixby and other references to be a very well “known manner” of applying toners to electrostatic images, is not excluded by the language of either the specification or the claims.

With regard to appellant’s argument (2), it is true that Bixby discloses a toner mixture of positively and negatively charged particles in which both sets of particles are organic and fusible in nature. The examiner and board were of the view, however, that Bixby also discloses the use of mixtures of positively charged organic and negatively charged inorganic toner particles. To resolve those contentions, it is necessary to look at the Bixby disclosure in some detail. Bixby first discloses specific examples of resinous organic toners which are positively and negatively chargeable with respect to a polystyrene carrier surface:

* * * suitable toner materials which are positive relative to the polystyrene are gilsonite [an asphalt material], either by itself or with Raven Beads carbon black to give a black toner; Amberol 800-P (a trade name of Rohn & Haas Co. for a synthetic resin) either with Hansa yellow (a trade name of General Dyestuff Corp.) for a yellow toner, or with Duplex Maroon lithol (a trade name of Calco Division of American Cyanamid Co.) for a red toner or with phthalo-.cyanine blue for a blue toner. Suitable toner compositions which are negative relative to a polystyrene surface are Amberol F-71 (a trade name of Rohn & Haas Co. for a synthetic resin) with either Raven Beads carbon black or black iron oxide for a black toner.

Bixby then states :

In general, resins such as manjak, gilsonite, casein, polymethyl methacrylate and cellulose acetate give up electrons relatively easily, i.e., are easily charged to a positive potential triboelectrieally. While materials such as Yinsol (a trade name of Hercules Powder Oo. for a thermoplastic resin derived from pine wood), dammar, tartaric acid, polyvinyl butyral and various rosin-modified urea-formaldehyde resins easily acquire electrons, i.e., become negatively charged triboelectrieally. In black pigments and, dyes, it has been found that materials such as manganese dioxide, Mack iron oxide and Haven Beads carbon black easily acquire a negative charge, while nigrosine easily acquires a positive charge. The selection of suitable toner materials can be made by any one skilled in the art from the many materials that have been tested and occupy recognized positions in the triboelectric series. The dimension of the charge acquired by any particular material through triboelectric contact with any designated material is easily and readily determined as is well known to those skilled in the art. [Emphasis supplied.]

Contrary to appellant’s arguments, we think that the inorganic manganese dioxide, black iron oxide and carbon black materials disclosed by Bixby would be contemplated by one of ordinary skill in this art not only to be useful as coloring pigments for organic resinous toners, but also to be separately useful as negatively charged inorganic toners per se. Certainly nothing in Bixby suggests that both the positive and negative charge bearing components of his toner mixture must be organic to achieve his purpose. Moreover, as the examiner and board point out, the other references of record, notably Carlson I and II, make it clear that inorganic materials such as talcum, zinc oxide, or carbon black have long been used in the art as toners in their own right.

The record shows that all claims were treated by the Patent Office and appellant below as standing or falling with claims 1 and 10, as we so treat them here. See In re Allen, 51 CCPA 809, 324 F. 2d 998, 139 USPQ 492.

In view of the above, it is unnecessary to consider the remaining rejections of the claims under 35 USC 112 which were made below.

The decision is affirmed.

Smith, Judge,

concurring.

The record shows that the Board of Appeals here consisted of an examiner-in-chief and two acting examiners-in-chief. Appellant does not challenge the legality of that board. For the reasons expressed in my dissenting opinion in In re WieChert, 54 CCPA 957, 370 F. 2d 927, 152 USPQ 247, the decision of such a board in my view is a legal nullity. However, I must accept the majority’s view on this issue in the Wieehert case, i.e., the legality of the board is not an issue here. I therefore participate in the merits of this appeal and in so doing, agree with the conclusion of the majority. 
      
       Serial No. 123,099, filed July 11, 1961.
     
      
       The examiner stated:
      * * * Bixby teaches mixing the organic resin capable of acquiring a positive charge with the particles capable of acquiring a negative charge and which may be inorganic prior to contacting the toner particles with a “carrier” * * *, Illustrated In Figures 3 and 5, respectively, of the drawing. * * * [The] method claims * * * read on “applying” the developer composition consisting of a mixture of toners to the surface to be developed by means of the cylindrical drum shown in Figure 3 or the “belt” apparatus in Figure 5 or the bristles of a fur brush as disclosed in column 3, lines 53-65 of the Bixby patent.
     