DECISION OF THE COMMISSIONER
IN THE MATTER of a request for a review by
the Commissioner of Patents of the Examiner's
Final Action under Section 47 of the Patent
Rules (Prior to the Amendment by Order-in-Coun-
cil P.C. 1970-728 effective June 1, 1970).
AND
IN THE MATTER of a patent application serial
number 850,482 filed May 31, 1962 for an inven-
tion entitled:
LINE SEQUENTIAL COLOR XEROGRAPHY
Patent Agent for Applicant: Messrs. Gowling & Henderson,
Ottawa, Ontario.
This decision deals with a request for a review by the
Commissioner of Patents of the Examiners Final Action rejecting
claims 1-4 inclusive, of Application No. 850,482. This request
was made in accordance with Section 47(3) of the Patent Rules
(prior to amendment by Order-In-Council P.C. 1970 - 728 effective
June 1, 1970), dated May 8, 1970.
The Patent Appeal Board has reviewed the prosecution of
this application and the facts are as follows:
Application No. 850,482, filed May 31, 1962 in the name
of W.E. Bixby relates to Line Sequential Color Xerography and
more particular to a method of image reproduction comprising
prismatically breaking a light image pattern into spectra
bands, and illuminating a sensitive xerographic plate with said
spectra bands to form a corresponding electrostatic latent
image.
The examiner reported on the application on April 22, 1964.
because the search for prior art had revealed no pertinent
references the objections made were confined to informalities
under Sections 25 and 22(2) of the Patent Rules. Rule 39 was
also invoked.
The applicant responded October 22 1964 listing the
references cited during examination of the corresponding
application filed in U.S.A. The disclosure and claims were
amended to meet the examiners refection and to comply with
the Rules. The prior art was discussed in detail by the
applicant and allowance of the amended claims was urged.
The examiner's report of August 15, 1967 refused claims
1-4 and 19 as being too broad and failing to define over two
publications made of record in the applicant's response noted
above. Claims 3,10 and 13 were also rejected as inexplicit
under Section 36(2) of the Patent Act, on formal grounds.
The applicant's response of February 8, 1968,amended
claims 3, 10 and 13 and added new claims 12-21 ands 31-37 and
argued for allowance thereof on the basis that the prior art
microdispersion systems were confined to the photographic art
only, and had not been applied to xerography until this appli-
cation. It was also pointed out that microdispersion had never
achieved practical development in photography.
The examiner's action of May 7, 1968, divided the claims
into six groups of different subject matter and indicated how
the claims must be restricted to one invention under Section
38(2) of the Patent Act and Section 60(1) of the Patent Rules.
Claim 28 was also rejected on formal grounds.
The applicant's response of October 31,1968 cancelled
all but two groups of subject matter including claim 28, thus
satisfying the requirements of the previous examiner's report.
The fourth examiner's report of February 14, 1969,
applied prior art including the following references:
RCA Review: Sept. 1958, Rydz
U.S.A. Patent 2,278,940 Apr. 7, 1942, Murphy
Canadian Patent 357,742, May 12 1936 Prienerstorfer
Canadian Patent 93,040 May 9,1905, Drac
Claims 1-5 were refused as being too broad and failing
to define patentable subject matter over the references. These
claims were also refused as being obvious to use prismatic color
separation techniques for color separation in electro-photographic
processes such as xerography.
The applicant's response of May 12, 1969 traversed the
examiner's rejection and argued that the Rydz reference is
experimental and does not clearly teach that photograph and
xerography are analogous arts and that claims 1-5 are neither
anticipated by, nor obvious, in view of the references. It was
further argued that it was unwarranted to combine references
from non-analogous arts.
The examiner's report of June 24, 1969 again rejected
claims 1-5 on the above cited references and pointed out that
electro-photographic methods are taught by the Rydz reference,
which are analogous to xerography, that Rydz uses a color
separation technique using filters to provide tristimulus
information and color strip development in the electro-
photographic process. The examiner holds that it is obvious
to replace the colour separation techniques of Rydz with
prismatic separation techniques of Drac, Murphy or Preinerstorfer.
The applicant's response of September 19, 1969, traversed
the above rejection and stated that the claims rejected are
not anticipated by a single reference and that the references
have been improperly combined to reject on obviousness. Applicant
contended that the combination of references is unobvious and
inoperable, and non-anticipative. The applicant reviewed each
reference in detail and argued the reasons why the alleged
combinations are inoperable.
The last examiner's report was issued February 1,1970
under Rule 46 and was made "final". This report was essentially
a repetition of that of June 24, 1969 with the exception that
only claims 1-4 were refused.
On May 8, 1970 the applicant requested a review of prose-
cution by the Commissioner of Patents. The applicant presented
arguments traversing the Final Rejection, which are a
reiteration of those presented in the response of September
19, 1968 with a more detailed analysis of the references.
It might be noted that at no time did the examiner reject on
anticipation or lack of novelty.
Upon review and careful consideration of the grounds for
rejection set forth by the examiner,as well as all the arguments
presented by the applicant,I am satisfied that the rejection
of claims 1-4 is well-founded.
A basic point at issue appears to be: Is it obvious to
apply certain specific photographic exposure techniques, in
particular the color separation technique, to electro-photographic
processes e.g. xerography?
A review of the prior art shows that Rydz et al (R.C.A.
Review, September 1958 discloses an electrographic process
for the preparation of color prints. Color separation techniques
by color filters are discussed (pages 473-477). This color
separation process provides color information in the form of
tristimulus values for every area in a scene.
Drac (Canadian Patent No. 93,040), discloses a method of
producing three negatives, each one representing a different
color. The image is separated by prisms and lenses.
Murphy (U.S. Patent No. 2,278,940) discloses means for
producing pictures in color by employing a dispersion prism
for directing light from the picture to be reproduced to
different light sensitive elements. Electrical signals are
modulated in accordance with the light received by the light
sensitive elements. The modulated signals control paint guns,
which paint a color picture corresponding to the original
picture.
Preinerstorfer (Canadian Patent No. 357,742) teaches
production and reproduction of colored photographs especially
motion picture photography. The light image pattern is
prismatically broken into spectra bands which are projected
onto a photographic layer.
Claim 1 of the application reads:
A method of image reproduction comprising prismatically
breaking a light image pattern into spectra bands,and
illuminating a sensitive xerographic plate with said
spectra bands to form a corresponding electrostatic
latent image.
It is obvious that this claim reads on the Rydz et al except
for the color separation technique (prismatic).
Is there an inventive step in using a prism to break a
light image pattern into spectra bands in this situation?
Rydz uses a filter technique. There are other ways of breaking
a light image pattern. In the three patents referred to above,
the light image pattern is prismatically broken into spectra
bands.
The applicant contends that "there can be no analogy drawn
between photographic processes and those concerned with xero-
graphy" (Applicant's letter of May 8, 1970,page 7), However,
the proceedings of the IRE (Institute of Radio Engineers) differ
on this and in their "Standards on Electrostato-graphic Devices
1961" (approved April 14, 1960) page 619 March 1961 Proceedings
define "xerography" as "That branch of electrostatic electro-
photography which employs a photoconductive insulating medium...
....... for producing a visible record". Further it is known
to apply some photographic exposure techniques such as exposure
by lens systems, contact exposure and scanning to xerographic
plates. It merely involves the substitution of one photo-
sensitive (xerographic) recording medium for another (photographic).
It is obvious that exposure times required light intensities,
spectral responses, etc. will vary with the characteristics
of the medium. It is also obvious that one would obtain an
electrostatic latent image in electro-photography whereas a
latent chemical image results in photography. I therefore
find the analogy drawn between photographic processes and those
concerned with xerography to be proper.
Claims 2-4 include the further step of developing the
latent image. This step is required if one is to perceive a
visible image. Claim 2 sets forth the development step in such
broad terms of desired result as to fail to define over three-
color development procedure of structured images described in
Rydz et al. Claim 3 is directed to an obvious step. Claim 4
dependent upon claim 3 merely sets forth an apparatus limitation
already provided in Preinerstorfer.
Claims 1-4 are not specific claims and are indeed couched
in very broad terms. The substitution of the prismatic technique
as claimed does not perform or effect some new function or
result with the elements of the combination.
In view of the cited references I am satisfied that it
is an obvious step to merely replace the color separation
techniques as used by Rydz et al, with a well-known prismatic
color dispersion technique as taught by Drac, Preinerstorfer
or Murphy and arrive at the broad solution of the method of
image reproduction as defined in claims 1-4.
I find the subject matter of the claims do not exhibit
inventive ingenuity in view of the prior art and the rejection
of the examiner is upheld. Claims 1-4 stand rejected.
R. E . Thomas,
Chairman, Patent Appeal Board
I agree with the findings of the Patent Appeal Board.
The rejection of claims 1-4 is upheld. Prosecution of the
application will be resumed on the basis of the remaining
claims in due coarse.
Decision Accordingly,
A.M. Laidlaw,
Commissioner of Patents.
Dated at Ottawa,
Ontario, this 3rd
day of Novembers 1970