Appeal No. 95-3988
Application 07/986,316
image to a substrate while claim 90 specifies that this substrate is a transparency (see supra pages 2-3).
With respect to claims 87 through 89, the examiner points to certain disclosure of Watanabe (col. 8,
lines 46-59, col. 9, lines 1-17, and col. 10, lines 22-55) which evinces that the transfer “may be
conducted by heat or pressure,” including the use of a “pressure roller,” to a substrate that can be
impregnated by the developer. We find that one of ordinary skill in this art would have reasonably
inferred from this evidence that, as submitted by the examiner, (1) “adhesion to the [substrate] would
be greater than to the photosensitive member” with respect to claim 87; (2) that the use of a “pressure
roller would have suggested the use of sufficient pressure to “bring about the transfer and impregnation”
with respect to claim 88; and (3) a “combination” of heat and pressure could be used for image transfer
with respect to claim 89 (answer, pages 5 and 11-12). With respect to claim 90, the examiner finds
that Watanabe discloses transparency substrates “for image retention” (col. 9, lines 18-25) as well as
the “production of transparencies for overhead projection” and concludes that the use of transparency
substrates was within the ordinary skill of the art (col. 10, lines 26-30) (answer, pages 5 and 12).
Upon carefully considering appellants’ arguments, we must agree with the examiner’s position.
We find that appealed claim 87 sets forth the limitation that a “thermal gradient” is applied to “the
developed image” in such manner “that adhesion of the developed image to the substrate is greater than
the adhesion of the image to the imaging member.” We give these terms their plain meaning, and thus
we agree with the examiner that the method of image transfer using heat as set forth in the reference
would inherently satisfy this claim provision. Appellants’ arguments with respect to this issue (principal
brief, pages 17 and 20; reply brief, pages 3-4) merely describe the transfer event according to the claim
and do not address whether the same conditions occur in the transfer method taught in Watanabe.
With respect to appellants’ arguments as to the pressure applied according to the transfer method
specified in claim 88 (principal brief, pages 18 and 20), we observe that the pressure can be as low as
“about 100 . . . pounds per square inch.” It is not apparent from appellants’ arguments that the “high
pressure” discussed therein encompasses the entire pressure range set forth in the claim. We are also
unconvinced by appellants’ allegation (principal brief, pages 18-19 and 20) that one of ordinary skill in
this art would not have combined heat and pressure in a transfer method as provided for in claim 89.
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