Bamberg et al.v.Dalvey et al.

Patent Trial and Appeal Board

Feb 12, 2015

12193578 (P.T.A.B. Feb. 12, 2015)

BoxInterferences@uspto.gov Paper 295
Telephone: 571-272-4683 Entered: 12 February 2015

UNITED STATES PATENT AND TRADEMARK OFFICE
PATENT TRIAL AND APPEAL BOARD
____________________

JODI A. DALVEY and NABIL F. NASSER, Junior Party,
v.
ULF BAMBERG, PETER KUMMER and ILONA STIBUREK, Senior Party.
____________________

Interference 105,961 McK
Daley Patent 7,754,042 B2
v.
Bamberg Application 13/182,197
____________________

Interference 105,964 McK
Dalvey Patent 7,749,581 B2, Patent 7,766,475 B2
Patent 8,361,574 B2, and Patent 8,703,256 B2
v.
Bamberg Application 13/177,284
____________________

Patent Interference 105,966 McK
Dalvey Patent 7,771,554 B2 and RE 41,623 E
v.
Bamberg Application 13/207,236 and Application 13/223,541
____________________

Before: FRED E. McKELVEY, RICHARD E. SCHAFER, and
JAMES T. MOORE, Administrative Patent Judges.

McKELVEY, Administrative Patent Judge.

JUDGMENT

2

In view of the DECISION ON MOTIONS (Paper 294), it is— 1
ORDERED that judgment be entered against senior party Ulf Bamberg, 2
Peter Kummer, and Ilona Stiburek and real party in interest Arkwright Advanced 3
Coating, Inc, as to all counts; 4
FURTHER ORDERED that claims 23-34 (all claims) of Bamberg involved 5
application 13/182,197 be FINALLY REFUSED, 35 U.S.C. 135(a); 6
FURTHER ORDERED that claims 30-49 (all claims) of Bamberg involved 7
application 13/177284 be FINALLY REFUSED, 35 U.S.C. 135(a); 8
FURTHER ORDERED that claims 1-17 (all claims) of Bamberg involved 9
application 13/233,541 be FINALLY REFUSED, 35 U.S.C. 135(a); 10
FURTHER ORDERED that claims 1-2 and 5-14 (all claims) of Bamberg 11
involved application 13/207,236 be FINALLY REFUSED, 35 U.S.C. 135(a); 12
FURTHER ORDERED that a copy of this judgment be entered in the 13
administrative record of: 14
(1) Patent 7,754,042; 15
(2) Patent 7,749,518; 16
(3) Patent 8,361,574; 17
(4) Dalvey Application 13/745,995; 18
(5) Reissue Patent 41,623; 19
(6) Patent 7,771,554; 20
(7) Bamberg Application 13/182,197; 21
(8) Bamberg Application 13/177,284; 22
(9) Bamberg Application 13/233,541; and 23
(10) Bamberg Application 13/207,236. 24
3

FURTHER ORDERED that a party seeking judicial review timely serve 1
notice on the Director of the United States Patent and Trademark Office. 2
37 C.F.R. §§ 90.1 and 104.2. 3
FURTHER ORDERED that attention is directed to Biogen Idec MA, Inc., v. 4
Japanese Foundation for Cancer Research, 2014 WL 2167677 (D. Mass. 2014). 5

NOTICE: "Any agreement or understanding between parties to an interference,
including any collateral agreements referred to therein, made in connection with or
in contemplation of the termination of the interference, shall be in writing and a
true copy thereof filed in the Patent and Trademark Office before the termination
of the interference as between the said parties to the agreement or understanding."
35 U.S.C. 135(c); see also Bd.R. 205 (settlement agreements).
4

For Dalvey:

Devan V. Padmanabhan
Nathan J. Witzany
Paul J. Robbennolt
David A. Davenport
Winthrop & Weinstine
dpadmanabhan@winthrop.com
nwitzany@winthrop.com
probbennolt@winthrop.com
ddavenport@winthrop.com

For Bamber:

Bruce J. Koch
Thorsten Schmidt
Schmidt, LLC
bkoch@schmidt-llc.com
tschmidt@schmidt-llc.com

BoxInterferences@uspto.gov Paper 294
Telephone: 571-272-4683 Entered: 12 February 2015

UNITED STATES PATENT AND TRADEMARK OFFICE
PATENT TRIAL AND APPEAL BOARD
____________________

JODI A. DALVEY and NABIL F. NASSER, Junior Party,
v.
ULF BAMBERG, PETER KUMMER and ILONA STIBUREK, Senior Party.
____________________

Interference 105,961 McK
Daley Patent 7,754,042 B2
v.
Bamberg Application 13/182,197
____________________

Interference 105,964 McK
Dalvey Patent 7,749,581 B2, Patent 7,766,475 B2
Patent 8,361,574 B2, and Patent 8,703,256 B2
v.
Bamberg Application 13/177,284
____________________

Patent Interference 105,966 McK
Dalvey Patent 7,771,554 B2 and RE 41,623 E
v.
Bamberg Application 13/207,236 and Application 13/223,541
____________________

Before: FRED E. McKELVEY, RICHARD E. SCHAFER, and
JAMES T. MOORE, Administrative Patent Judges.

McKELVEY, Administrative Patent Judge.

DECISION ON MOTIONS

2

I. Introduction 1
Three interferences were declared: 2
(1) Interference 105,961, 3
(2) Interference 105,964, and 4
(3) Interference 105,966. 5
The interferences were consolidated. See, e.g., Paper 139. 6
Since February of 2014, all papers have been filed in the administrative 7
record of Interference 105,964. 8
References to Paper Numbers in this opinion are to a paper in the record of 9
Interference 105,964 unless otherwise noted. 10
The reader is referred to a Fourth Redeclaration (Paper 178) for an 11
identification of (1) the parties, (2) the patents, reissue patent, and applications 12
involved in each interference, (3) the counts, and (4) earlier constructive reductions 13
to practice (i.e., benefit for the purpose of priority) accorded to the parties. 14
A copy of Paper 178 appears as Appendix 1 to this opinion. 15
The parties are involved in a civil action for infringement filed in the 16
U.S. District Court for the District of Minnesota styled as Schwendimann v. 17
Arkwright Advanced Coating, Inc., Civil Action No. 0:11-cv-00820-ADM-JSM. 18
Paper 14, page 2:5-6. 19
Counsel have advised the Board that the civil action has been stayed pending 20
outcome of this interference. 21
II. Counts 22
A count defines the interfering subject matter and limits the scope of proofs 23
on the issue of priority. 24
The counts are Count 1, Count 2, and Count 3. 25
3

Count 1 is involved in Interference 105,964. Paper 178, page 8. 1
Count 2 is involved in Interference 105,961. Paper 178, page 4. 2
Count 3 is involved in Interference 105,966. Paper 178, pages 12-13. 3
III. Oral argument 4
Oral argument took place on 24 November 2014. 5
A copy of a transcript of oral argument has been made of record. Paper 293. 6
IV. Motions 7
We decide Dalvey Motions 3 and 8 and Bamberg Motions 5 and 7. 8
A. Dalvey Motions 9
1. Dalvey Motion 3 10
Dalvey Motion 3 seeks entry of judgment based on an alleged lack of a 11
written description and enablement. Paper 110. 12
Dalvey Supplement to Motion 3 seeks entry of judgment as to all involved 13
Bamberg claims in Bamberg application 13/207,236, added to the interference 14
after Dalvey Motion 3 was filed. Paper190. 15
Bamberg opposes. Paper 225. 16
Dalvey has replied. Paper 252. 17
2. Dalvey Motion 8 18
Dalvey Motion 8 seeks exclusion of evidence. Paper 113. 19
Bamberg opposes. Paper 227. 20
Dalvey has replied. Paper 262. 21
4

3. Other Dalvey Motions 1
In view of our disposition of Dalvey Motion 3 and Dalvey Motion 8, we 2
have not considered or decided the following Dalvey motions: 3
(1) Dalvey Motion 2 (Paper 86) (for judgment based on § 135(b)); 4
(2) Dalvey Motion 4 (Paper 178) (to substitute counts); and 5
(3) Dalvey Motion 5 (Paper 113) (judgment based on priority). 6
B. Bamberg Motions 7
1. Bamberg Motion 5 8
In response to Dalvey Motion 3 (37 C.F.R. §41.121(a)(2)), Bamberg 9
Motion 5 seeks entry of an order authorizing filing a motion to amend to substitute 10
new claims. Paper 80. 11
Dalvey has opposed. Paper 217. 12
Bamberg has replied. Paper 258. 13
2. Bamberg Motion 7 14
Bamberg Motion 7 sees to exclude evidence. Paper 270. 15
Dalvey has opposed. Paper 274. 16
Bamberg has replied. Paper 279. 17
3. Other Bamberg Motions 18
In view of our disposition of Dalvey Motion 3, we have not considered or 19
decided the following Bamberg motions: 20
(1) Bamberg Motion 1 (Paper 80) (substitute new counts); 21
(2) Bamberg Motion 2 (Paper 117 (vacate accorded benefit); 22
(3) Bamberg Motion 3 (Papers 118 and 190) (contingent on priority 23
be awarded to Dalvey, judgment against Dalvey based on unpatentability 24
over the prior art); and 25
5

(4) Bamberg Motion 6 (Paper 131) (judgment based on priority). 1
V. Dalvey Motion 3 2
A. Introduction 3
The Board may take up motions in any order. 37 C.F.R. § 125(a). 4
We elect to take up Dalvey Motion 3 first because it raises a “threshold” 5
issue. If the motion is granted, Dalvey prevails. 37 C.F.R. § 411.201 (definition of 6
“Threshold issue” (2)(ii)); 37 C.F.R. § 41.208(a)(1). 7
Dalvey Motion 3 seeks entry of judgment as to all involved Bamberg claims 8
based on an alleged lack of a written description and enablement. Paper 110; 9
Paper 190. 10
B. Facts1 11
1. Terminology 12
1. “Bamberg” is a reference to the party Bamberg, the real party in 13
interest being Arkwright Advanced Coating, Inc. Paper 25. 14
2. “Ulf Bamberg” or “Mr. Bamberg” is a reference to inventor Bamberg. 15
3. “Dalvey” is a reference to the party Dalvey, the real party in interest 16
being Jodi A. Schwendimann. Paper 17. NuCoat, Inc., and Cooler 17
Concepts, Inc., are licensees. Id. 18
4. “Jodi A. Dalvey” and “Jodi A. Schwendimann” refer to the same 19
person—an inventor named in the involved Dalvey patents. 20

1 To the extent that a finding is a conclusion of law, it may be treated as such.

6

2. Issue 1
5. The general issue is whether Bamberg’s claims are unpatentable under 2
35 U.S.C. § 112, first paragraph, due to a lack of an adequate written 3
description. 4
6. According to Dalvey, Bamberg copied claims in its application for the 5
purpose of provoking interferences with Dalvey patents. 6
7. Dalvey therefore reasons that the copied Bamberg claims must be 7
construed in light of the Dalvey patents, the patents from which the 8
claims were copied. Paper 110, page 5; Agilent Technologies, Inc. v. 9
Affymetrix, Inc., 567 F.3d 1366, 1375 (Fed. Cir. 2009). 10
8. Bamberg, while not explicitly denying that it copied claims, maintains 11
that the words in the claims should be given their ordinary and 12
customary meanings. Paper 225, page 2; Phillips v. AWH Corp., 415 13
F.3d 1303, 1312 (Fed. Cir. 2005) (en banc). 14
9. As will become apparent, in this case whether Agilent or Phillips is 15
applied makes no difference. 16
10. The specific issue is the parties ask us to decide is: Does the 17
descriptive portion of the specification of Bamberg’s PCT application 18
have a written description for claims that cover “white layers” that 19
melt at a temperature below about 220º C.? 20
3. Burden and Standard of Proof 21
11. Dalvey has the burden of proof. 37 C.F.R. § 41.121(b). 22
12. The standard of proof is a preponderance of the evidence. See, e.g., 23
Bilstad v. Wakalopulos, 386 F.3d 1116, 1120-21 (Fed. Cir. 2004) (in 24
7

connection with a motion for judgment based on a lack of written 1
description, movant has a burden by a preponderance of the evidence). 2
13. Whether claimed subject matter is supported by a written description 3
is a question of fact. In re Alton, 76 F.3d 1168, 1171 (Fed. Cir. 1996). 4

4. Witnesses 5
(a) Dr. Scott A. Williams 6
14. Dr. Scott A. Williams was called as a witness for Dalvey. Ex. 2016 7
(direct testimony); Ex. 2045 (cross-examination). 8
15. He was awarded a Bachelor of Science degree from Purdue University 9
(1984) and a Ph.D. in physical chemistry from Montana State 10
University (1989). Ex. 2016, Appendix A (Board Assigned 11
Page #548). 12
16. Dr. Williams is a Professor at the School of Chemistry and Materials 13
Science of the Rochester Institute of Technology. Ex. 2016, ¶ 1. 14
17. He has also served as a Professor of Imaging Materials and Processes. 15
Ex. 2016, ¶ 2. 16
18. Dr. Williams has taught courses in polymer chemistry. Ex. 2016, ¶ 3. 17
19. He was Director of Research & Development at Fotowear, a company 18
that Dr. Williams testified was focused on iron-on-image transfer 19
products. Ex. 2016, ¶ 7. 20
20. Dr. Williams is qualified to express opinions on technical matters 21
related to the subject matter involved in this interference. 22
8

(b) Dr. William M. Risen, Jr. 1
21. Dr. William M. Risen, Jr., was called as a witness on behalf of 2
Bamberg. Ex. 1531 (direct testimony); Ex. 2051 (cross-examination). 3
22. He was awarded a Bachelor of Science degree in Chemistry from 4
Georgetown University (1962) and a Ph.D. from Purdue University 5
(1967). Ex. 1531, Appendix A (Board page #2,653). 6
23. Dr. Risen is a Professor Emeritus of Chemistry at Brown University. 7
Ex. 1531, ¶2. 8
24. He has worked with polymers and associated technology. Ex. 1053, 9
¶ 8 10
25. Dr. Risen has consulted “in the area of media . . . for more than 20 11
years, including specifically in the area of color print media and image 12
transfer.” Id. 13
26. He is named as an inventor on six patents relating to print media. Id. 14
27. Dr. Risen is qualified to express opinions on technical matters related 15
to the subject matter involved in this interference. 16

(c) Ulf Bamberg 17
28. Mr. Ulf Bamberg was called as a fact witness by Dalvey. Ex. 2030 18
(direct testimony); Ex. 2047 (cross-examination). 19
29. He is a named inventor on the involved Bamberg applications. 20
Ex. 2030, ¶ 1. 21
30. Mr. Bamberg was paid by Dalvey at the rate of $100.00 per hour. 22
9

31. His testimony relates to development activities associated with 1
making the inventions described and claimed in the involved Bamberg 2
applications. Ex. 2030, ¶¶ 3-10. 3

5. Claims Involved in the Interferences 4
32. The claims of the parties involved in the interferences are set out in 5
the following Table 1. 6
Table 1
Interference Corresponding Dalvey Claims Corresponding Bamberg Claims
105,961 Patent 7,754,042, claims 1-22 Appl’n 13/182,197, claims 23-34

105,964
Patent 7,749,581, claims 1-31
Patent 7,766,475, claims 1-21
Patent 8,361,574, claims 1-20
Appl’n 13/745,995, claims 1-20
Appl’n 13/177,284, claims 30-49

105,966
Reissue 41,623, claims 1-17
Patent 7,771,554, claims 1-14
Appl’n 13/233,541, claims 1-17
Appl’n 13/207,236, claims 1-2
and 5-14

Paper 110 (Dalvey Motion 3, page 3); Paper 190 (Dalvey Supplement 7
to Motion 3, page 2. 8

6. Scope of Bamberg’s Claims 9
33. According to Bamberg, “[t]he Bamberg claims, including the 10
[Bamberg] claims that define the three Counts of the Interferences, 11
do not include and should not be construed to include, a melting 12
temperature . . . limitation for the white layer.” Paper 225, 13
page 5:18-20. 14
10

34. A review of the Bamberg claims designated as corresponding to the 1
counts confirms Bamberg’s point. 2
35. For example, Bamberg Claim 30 of Bamberg application 13/177,284 3
involved in Interference 105,964 reads: 4
An image transfer article, comprising: 5

an ink-receptive layer, including at least one 6
surface configured to receive and carry indicia to be 7
transferred; a polymer layer including ethylene acrylic 8
acid underlaying the ink-receptive layer; 9

a white layer underlaying the polymer layer, the 10
white layer including a pigment providing a substantially 11
non-transparent, opaque background for received and 12
transferred indicia; and 13

a silicone-coated removable substrate underlaying 14
the white layer. 15

Ex. 1519, page 3:1-8; Paper 20, page 3:1-8 (italics added). 16
36. Bamberg states in its opposition that: 17
The claim language regarding “white layer” explicitly 18
states that the only requirement for the white layer of 19
claim 30 is to have “a pigment providing a substantially 20
non-transparent, opaque background for received and 21
transferred indicia.” 22

Paper 225, page 6:23-26. 23

37. Dr. Williams agrees that claim 30 does not include a melting 24
temperature. Ex. 2045, page 32:17 to page 33:5. 25
11

38. The claims of Bamberg application 13/182,197 involved in 1
Interference 105,961 likewise “do not contain any claim language 2
requiring a melt temperature range.” Paper 225, page 7:7-8. 3
39. Method claim 23 refers to the “white layer” as: 4
at least one of the one or more polymer layers with a 5
pigment, the pigment having a concentration or 6
configuration sufficient to provide an opaque background 7
for received indicia, when transferred to a base. 8

Ex. 1520, page 3:6-8. 9
40. The two Bamberg applications involved in Interference 105,966 do 10
not “contain any claim language that includes or should be construed 11
to include a melt temperature range . . .” 12
Paper 225, page 8:1-2. 13
41. For example, claim 1 of Bamberg application 13/12/233,541 defines 14
the “white layer” as: 15
. . . a release layer contacting the image transfer substrate 16
and an image-imparting layer that comprises a polymer 17
that includes indicia wherein the release layer is 18
impregnated with one or more titanium oxide or other 19
white pigment . . . . 20

Ex. 1523, page 3:3-6. 21
42. The involved Bamberg claims include within their scope: 22
(1) embodiments where the white layer is “non-fusible at 23
ironing temperatures (i.e. [that is], up to about 220ºC)” and 24
(2) embodiments where the white layer is fusible at ironing 25
temperatures below 220ºC. 26
12

6. Written Description Portion 1
of Bamberg Specifications 2

43. Normally evaluation of a lack of adequate written description issues is 3
based on the patent or application in which the claims appear. Cf. 4
Reiffin v. Microsoft Corp., 214 F.3d 1342, 1346 (Fed. Cir. 2000). 5
44. To establish what is contained in the written description portion of the 6
Bamberg specifications, Dalvey refers to an English language 7
translation of Bamberg PCT application PCT/IB99/00976 (filed 8
1 June 1999) and published as WO 00/73750 (7 Dec. 2000) 9
(Ex. 1001). 10
45. Bamberg has not objected to Dalvey’s use of the Bamberg PCT 11
application, as opposed to its involved applications, to resolve Dalvey 12
Motion . 13
46. Consistent with what appears to be the desire of the partie, we 14
therefore decide the adequate written description issue on the basis of 15
the Bamberg PCT application. Cf. Brand v. Miller, 487 F.3d 862, 16
869 (Fed. Cir. 2007) (in an interference the Board’s role is one of an 17
impartial adjudicator of an adversarial dispute between two parties). 18
47. There are at least two versions of the PCT application in the record. 19
A first version is identified as Exhibit 1001 and contains Board 20
Assigned Pages #1 through #23 (the Board assigns consecutive page 21
numbers to all exhibits filed). A second version is also identified as 22
Exhibit 1001and contains Board Assigned Pages #1285 through 23
#1307. The pages of Ex. 1001 referred to by the parties correspond to 24
the Board Assigned Pages of the first version. Accordingly, we elect 25
13

to refer to the first version of Ex. 1001. We attach to this opinion a 1
copy of Ex. 1001 (Board Ex. 3001) consisting of Board Assigned 2
Pages #2 through #23 with some of the hand-written line numbers for 3
ease of reference. 4
48. According to Dalvey, “each and every embodiment described [in the 5
Bamberg PCT application] includes a white layer that must not melt 6
at temperature of up to 220ºC.” (Bold in original, matter in brackets 7
added). Paper 110, page 7:5-6. 8
49. Dalvey relies on various portions of the Bamberg PCT specification to 9
support it “up to 220ºC” argument. 10
50. Ex. 3001, page #6:31 to #7:6 (Paper 110, page 7:12-16): 11
The white background layer which is found directly on 12
the adhesive layer, according to the present invention, 13
comprises or is composed of permanently elastic plastics 14
which are non-fusible at ironing temperatures (i.e. 15
[that is] up to about 220°C) and which are filled with 16
white pigments – also non-fusible (up to about 220°C). 17
The elastic plastics must not melt at ironing temperatures 18
in order not to provide with the adhesive layer, e.g. the 19
hot-melt, which provides the adhesion to the textile 20
substrate, an undesired mixture with impaired (adhesive 21
and covering) properties. 22

51. Ex. 3001, page #7:17-18 (Paper 110, page 7:17-18) (bold added): 23
Suitable pigments are only those which do not melt at 24
ironing on temperatures. 25

52. Ex. 3001, page #7:30-32 (Paper 110, page 7:19-21) (bold added): 26
14

These pigments can be blended alone or also in a mixture 1
with other non-fusible (up to 220°C) carrier agents such 2
as for example silicates or aluminates. 3

53. Ex. 3001, page #16:6-29; see also Paper 110, page 7:27-30 (bold 4
added): 5
The coating method comprises the following steps . . . 6
b) application of a white background layer composed of 7
elastic plastics which are non-fusible at ironing on 8
temperatures (i.e. up to about 220°C), and which are 9
filled with white, preferably inorganic, pigments onto the 10
hot-melt layer, preferably with a with a resulting layer 11
thickness of about 20-35 μm. 12

54. Original independent composition claim 1 of the Bamberg PCT 13
application also requires “a white background layer composed of 14
elastic plastics which are non-fusible at temperatures up to 220ºC.” 15
Ex. 3001, page #20:8-9; Paper 110, page 7:31-33 (bold added). 16
55. Original independent method claim 14 calls for “application of a 17
white background layer composed of elastic plastics non-fusible at 18
temperatures (i.e. up to about 220ºC).” Ex. 3001, page #22:9-10; 19
Paper 110, page 7:27-30. 20
56. The remaining original claims depend directly or indirectly from 21
independent composition claim 1 or independent method claim 14. 22

7. Testimony of Ulf Bamberg 23
57. While somewhat unusual, named Bamberg inventor Ulf Bamberg was 24
called to testify on behalf of Dalvey. Ex. 2030. 25
15

58. Mr. Bamberg testified about developing and testing of his invention. 1
Ex. 2030, ¶¶ 3-7. 2
59. One concern is said to have been a need “to develop a white 3
background layer that would bind effectively with the ink-receiving 4
layer and adhesive layer and would not crack or erode during typical 5
wear of the transfer substrate . . . .” Ex. 2030, ¶ 7:1-3. 6
60. Mr. Bamberg further testified as follows: 7
In addressing the need for a white background layer that 8
would retain a high level of contrast and resolution once 9
transferred, via application of heat, to the transfer 10
substrate, we came to understand that clarity and 11
resolution are decreased where the white background 12
layer is permitted to melt and mix with the ink-receiving 13
layer and/or the adhesive layer, causing the white 14
background layer to take on a hue of the transfer 15
substrate color. Accordingly, we developed a white 16
background layer that nonetheless formed a strong bind 17
with the ink-receiving layer but did not melt at 18
conventional iron-pressing temperatures (i.e. [that is] 19
temperatures up to about 220ºC). 20
21
That the white background layer comprised an elastic 22
plastic and did not melt and mix with the ink-receiving 23
layer at conventional iron-pressing temperatures, yet had 24
good adhesion with the adjacent layers, were very 25
important to the Invention and were required aspects of 26
the white background layer described in the . . . 27
[Bamberg PCT application]. 28

Ex. 2030, ¶¶ 9-10 (bold added). 29

8. Dalvey Disclosure 30
16

61. Consistent with Agilent, we turn to what is described in the descriptive 1
portion of the Dalvey patents. 2
62. A point in dispute between the parties is whether the descriptive 3
portion of the Dalvey specification describes “white layers” having a 4
melting point below “about 220ºC.” 5
63. In support of its discussion of the content of the Dalvey specifications, 6
Dalvey refers to Ex. 2013—Dalvey U.S. Patent No. 6,884,311 B1 7
(Apr. 26, 2005) (“ʼ311 Dalvey Patent”). The ʼ311 Dalvey Patent has 8
a few errors, particularly when it comes to descriptions of what is 9
shown in the drawings. See, e.g., Fig. 6 and compare with the 10
discussion at col. 10:15-48 mentioning drawing numbers which do not 11
appear in Fig. 6. Moreover, the ʼ311 Dalvey Patent is not involved in 12
the interferences. In order to avoid confusion, we refer to Ex. 2040—13
Dalvey U.S. Patent No. 7,749,581 B2, a Dalvey patent involved in 14
Interference 105,964. 15
64. According to Bamberg, the “white layer” described by Dalvey does 16
not melt at ironing temperatures (presumably meaning temperatures 17
above about 220º C.). Paper 225, page 15:12-13. 18
65. In support of its position, Bamberg relies on the following: 19
Because the polymeric component of the peel layer 520 20
generally has a high melting point, the application of heat, such 21
as from an iron, does not result in melting of this layer or in a 22
significant change in viscosity of the overall peel layer 520. 23
The change in viscosity is confined to the polymeric component 24
that actually contacts the ink or toner and is immediately 25
adjacent to the ink or toner. 26

17

Id., Ex. 2013, col. 9:34-41; Ex. 2040, col. 9:33-39. We note that 1
element 520 does not appear in the drawings. 2
66. Unlike Bamberg, Dalvey does not describe a minimum melting 3
temperature. 4
67. Fig. 8 of the ʼ311 Dalvey patent is reproduced below. 5
6
Fig 8 depicts a a cross-sectional view of one 7
process of image transfer onto a colored product. 8

68. Example 4 has the following to say about Fig. 8: 9
As shown at 800 in Fig. 8, the peeled printed layers 820, 10
including at least one or more layers collectively 11
comprising a white or luminescent pigment and received 12
indicia, were then placed against a fabric 854 and 13
covered with release paper 852. Heat 850 was applied to 14
the peeled printed layers 820 and the release paper 852. 15
The heat 850 was applied at 200 F, 225 F, 250 F, 300 F, 16
350 F, and 400 F. A good image transfer was observed 17
for all of these temperatures. 18

18

Ex. 2040, col. 10:65 to col. 11:5. 1

69. The Farenheit temperatures described by Dalvey converted to 2
Centigrade temperatures are set out below: 3
Farenheit Centigrade
200 ~93
225 ~107
250 ~121
300 ~148
350 ~177
400 ~204

70. On the other hand, Bamberg describes iron-on temperatures in the 4
range of 160 to 220ºC, preferably 170ºC. Ex. 3001, page 17:1-4; see 5
also Ex. 3001, page 18:31 (“about 190ºC”). 6
71. The iron-on temperatures described by Dalvey are consistent with the 7
use of plastics that are viscous at temperatures lower than the plastics 8
described by Bamberg. 9

9. Testimony of Dr. Williams and Dr. Risen 10
72. Dr. Williams explains why he could not find a Bamberg written 11
description of a white layer that melted or was fusible at temperatures 12
below 220ºC. Ex. 2016, ¶¶ 13, 15, and 18. 13
73. His testimony is based on his analysis of (1) portions of the Bamberg 14
PCT priority document (Ex. 2016, ¶ 13) and (2) testimony of Ulf 15
Bamberg (Ex. 2016, ¶ 19–20). 16
19

74. Dr. Risen, while generally addressing an adhesive layer, does not 1
convincingly explain how the Bamberg PCT application adequately 2
describes a “white layer” having a melting temperature below about 3
220 ºC. 4
75. Dr. Risen, while critical of Dr. Williams (Ex. 1531, ¶¶ 36–38), 5
nowhere points to any portion of the Bamberg PCT application 6
discussing a “white layer” having a melting point below about 200ºC. 7
76. To the extent there is a conflict between the testimony of Dr. Williams 8
and that of Dr. Risen, we credit the testimony of Dr. Williams over 9
that of Dr. Risen. 10
77. Unlike Dr. Risen, the facts and opinions stated by Dr. Williams are 11
based on the relevant document, viz., the Bamberg PCT application 12
and are more consistent with than document than any opinion 13
expressed by Dr. Risen. 14
10. Prosecution History of 15
Bamberg Application 13/930,116 16

78. Dalvey calls attention to prosecution history in Bamberg 17
Application 13/930,116—an application not involved in these 18
interferences. Paper 110, page 8:24 to page 9:19. 19
79. In an Office Action dated 13 November 2013, the Examiner rejected 20
then pending claims 1-11 and 13-20 based on a lack of a written 21
description. Ex. 2008, page 2-3. 22
80. The Examiner found in connection with then-pending claims 1 and 19 23
that “[t]here is no support in the [descriptive portion of] the 24
20

specification for ‘a softening point temperature of less than about 220 1
degree[s] C.” Id. at page 3:1-2. 2
81. Claim 1 of Bamberg application 13/930,116 read at the time as 3
follows: 4
An image transfer article, comprising: an image-parting 5
member having a softening point temperature less than 6
about 220 degree[]C., the image-imparting member 7
including (i) at least one surface configured to receive 8
and carry indicia to be transferred, the at least one surface 9
configured to be transferred in its entirety, and (ii) at least 10
one portion of a pigment which, when transferred, 11
provides an opaque background for received indicia; and 12
a removable substrate disposed adjacent the image-13
imparting member. 14

Ex. 2033, page 2 (italics added). 15
82. Assigning any weight to the prosecution history is somewhat difficult 16
other than to note that Dr. Williams’ opinion with respect to lack of a 17
written description relating to the melt temperature is consistent with 18
the Examiner’s rejection. Ex. 2016, ¶¶ 21-22. 19
11. Additional Finding 20
83. The specifications of the involved Bamberg applications do not 21
contain an adequate written description of the subject matter claimed 22
in those applications. 23
21

C. Analysis 1
1. Agilent-based Analysis 2
Bamberg copied claims from the Dalvey patents to provoke the interference. 3
Accordingly, the scope of the copied claims is to be determined based on the 4
written description of the Dalvey patents. Agilent Technologies, Inc. v. Affymetrix, 5
Inc., 567 F.3d 1366, 1377 (Fed. Cir. 2009). 6
In so many words, Dalvey does not describe a “white layer” that comprises 7
“plastics which are [required to be] non-fusible at ironing temperatures (i.e., up to 8
about 220º C) . . . .” (Ex. 1001, page 6:28-35. 9
Therefore, under Agilent, the Bamberg claims are to be construed as 10
“generic” claims for the purpose of determining whether Bamberg describes the 11
Dalvey inventions. 12
We find that Dalvey describes a “generic” invention where any suitable 13
white layer may be used whereas Bamberg describes a “sub-generic” invention 14
within the scope of Dalvey’s “generic” invention where the Bamberg white layer 15
must be made of plastics that are non-fusible at ironing temperatures “up to about 16
220ºC.” 17
Dalvey does not require use of a plastic that is non-fusible at ironing 18
temperatures up to about 220ºC. 19
When Bamberg’s claims are construed pursuant to Agilent, we next look to 20
the descriptive portion of the Bamberg specification with the view to determining 21
whether Bamberg describes the Dalvey “generic” invention. 22
As is apparent from our findings, we find that Bamberg does not describe 23
Dalvey’s “generic” invention. 24
22

It follows that under Agilent, Bamberg lacks the necessary written 1
description and therefore the Bamberg claims involved in the interference are not 2
patentable to Bamberg. 3

2. Non-Agilent Analysis 4
In opposing Dalvey Motion 3, Bamberg does not expressly concede that 5
Agilent is applicable precedent as applied to these interferences. 6
Rather, we understand that Bamberg is arguing that (1) the principles of 7
Phillips v. AWH Corp., 415 F.3d 1303, 1312 (Fed. Cir. 2005) (en banc) apply, 8
(2) words of the involved Bamberg claims should be given their ordinary meaning, 9
(3) when the words are given their ordinary meaning the claims should be 10
construed broadly to cover what we have referred to as a “generic” invention, and 11
(4) the descriptive portion of the involved Bamberg specification support a 12
“generic” invention. Paper 225, page 2:21 through page 3:12. 13
Bamberg goes on to say that limitations from a specification cannot be read 14
into the claims. Id. page 3:13-24. 15
Basically, what Bamberg may be arguing is that the Bamberg claims should 16
be construed in light of the descriptive portion of the Bamberg specifications. 17
Cf. United States v. Adams, 383 U.S. 39, 49 (1966), claims of a patent limit the 18
invention and the specification cannot be used to broaden the invention; 19
nevertheless claims are to be construed in light of the specification and both the 20
specification and claims are to be read with a view to ascertaining the invention); 21
Am. Fruit Growers v. Brogdex Co., 283 U.S. 1, 5 (1931) (the claim of a patent 22
must always be explained by and read in connection with the specification). 23
23

Assuming arguendo that Agilent is not applicable precedent, as our above-1
discussed findings make clear, we would reach the same finding, viz., the 2
descriptive portion of the Bamberg specifications do not provide an adequate 3
written description of a “white layer” made of plastics that are non-fusible at 4
ironing temperatures below about 220ºC. 5
Thus, apart from Agilent, it still follows that the broadly claimed Bamberg 6
subject matter is not described in the descriptive portions of the Bamberg 7
specifications. 8

D. Decision 9
For the reasons given, Dalvey Motion 3 is granted, based solely on a failure 10
of Bamberg to satisfy the written description requirement of the first paragraph of 11
35 U.S.C. § 112. 12
We have not considered or decided any issue in connection with Dalvey’s 13
lack of enablement arguments. 14

VI. Bamberg Responsive Motion 5 15

A. Background 16
In response to Dalvey Motion 3 (lack of written description), Bamberg 17
Responsive Motion 5 requests entry of amendments in Bamberg applications: 18
(1) Bamberg application 13/182,197 (Paper 130, Appendix 3); 19
(2) Bamberg application 13/177,284 (Paper 130, Appendix 5); 20
(3) Bamberg application 13/223,541 (Paper 130, Appendix 7); and 21
(4) Bamberg application 13/207,236 (Paper 130, Appendix 9) 22
Dalvey has opposed. Paper 217. 23
24

Bamberg has replied. Paper 258. 1
B. Facts 2
1. Requirement for a Claim Chart 3
1. The rules provide that the Board may authorize a party to file a 4
responsive motion to add amended claims. 37 C.F.R. § 41.121 (a)(2). 5
2. The rules specifically provide: 6
Any motion to add a claim must include . . . [a] claim chart 7
showing where the disclosure of the . . . application provides 8
written description of the subject of the claim . . . . 9

37 C.F.R. § 41.110(c)(2). 10

3. The Standing Order (Paper 2) also discusses the need for claim charts. 11
Standing Order ¶ 110. 12
4. Paragraph 110 states that “[a] movant seeking to add a claim must 13
comply with the requirements of Bd.R. 110(c) for the proposed 14
claim.” Standing Order, ¶ 110 (first sentence). 15
5. The Federal Register Notice of Final Rule advises that “a movant 16
adding a claim must show where the written description for the claim 17
can be found (§ 41.110(c)(2)).” 69 Fed. Reg. 49960, 49995 (col. 2, 18
first full paragraph, second sentence) (Aug. 12, 2004). 19
6. The requirement for a claim chart serves a highly useful function in 20
administration of interferences. 21
7. Often an argument opposing a motion to add claims is a lack of 22
written description as to those claims. 23
8. A party seeking to add a claim, and providing a claim chart, puts the 24
opponent on notice of why the moving party believes the subject 25
25

matter proposed added claim is supported by an adequate written 1
description. 2
9. The claim chart permits the opponent to focus on those claimed 3
limitations that an opponent believes are not supported by an adequate 4
written description. 5
10. Any opposition can then address why the information in the claim 6
chart is not adequate to confirm support for a written description of 7
particular limitations. 8
11. The moving party may then file a reply with any observations in its 9
opponent’s opposition. 10
12. Failure to file a claim chart complicates administration of interference 11
cases and is contrary to the policy objectives of the Director that 12
proceedings under Part 41 be conducted in a just, speedy, and 13
inexpensive manner. 37 C.F.R. § 41.1(b). 14
13. Where a party does not provide a claim chart, the opponent—a party 15
not having the burden of proof—out of an abundance of caution may 16
feel that it has to discuss in the first instance where a particular 17
limitation is not supported by an adequate written description. 18
14. In that case, the moving party addresses the opponent’s observations 19
in its reply. 20
15. However, the rules do not authorize an opponent to file a sur-reply. 21
16. The opponent, therefore, would not have a fair opportunity to address 22
a moving party’s views on where the descriptive portion of the 23
specification describes any contested limitation. 24
26

17. It is possible, of course, that the Board can authorize a sur-reply. 1
However, authorizing a sur-reply burdens both the opponent and the 2
Board. 3
18. If a party complies with the rules, no occasion arises (1) for the 4
opponent to ask for a conference call to seeking authorization to file a 5
sur-reply, (2) for the conference call, (3) for additional resources to be 6
expended by the opponent in preparing and filing a sur-reply, and 7
(4) possible delay in reaching a final resolution of the interference. 8

2. Bamberg—No Claim Chart Provided 9
19. Bamberg did not provide a claim chart with its Responsive Motion 5. 10
20. The lack of a claim chart was called to our attention, as well as to the 11
attention of Bamberg, in Dalvey Opposition 5. Paper 217, page 1:22 12
through page 2:2. 13
21. Notwithstanding this fact, we have not found in Bamberg Reply 5 any 14
discussion responsive to Dalvey’s opposition observation concerning 15
the lack of claim chart. 16
22. Bamberg Motion 5 was accompanied by a Statement of Facts. 17
Paper 130, Appendix 2. 18
23. Dalvey Opposition 5 admits or denies facts set out by Bamberg. 19
Paper 217, Appendix 2. 20
24. Dalvey Appendix 2 does not set out any additional facts. 21
25. A conference call was held on 12 May 2014 after which a Post 22
Conference Call Order was entered. Paper 139. 23
26. Dalvey observes that: 24
27

[i]n view of the Board’s Post Conference call Order entered 1
May 12, 2014 (Paper 139), page 8, indicating that the parties 2
may, but no longer requiring the parties to, continue using a 3
statement facts in opposition and replies, however, Dalvey has 4
not provided additional facts in Appendix 2 instead opting to 5
provide all facts in the body of the opposition, as requested [by 6
the Board] during the telephone conference of May 1, 2014. 7

Paper 217, page 1:13-17. 8
27. The order provided , inter alia, that “[t]he parties may continue to use 9
[a] statement of facts in opposition and replies.” Paper 139, page 8. 10
28. Bamberg maintains that Dalvey “misread this Order.” Paper 258, 11
page 1:10. 12
29. As a result of Dalvey’s failure to supply additional facts (to be 13
admitted or denied), Bamberg says that it “is now unable to respond 14
properly to Dalvey’s additional ‘material facts’ . . . [Bamberg’s] 15
opposition.” Paper 258, page 1:15-16. 16
30. Dalvey did not “misread this Order.” 17
31. Rather, by use of the word “may”, the judge assigned to the 18
interferences authorized—consistent with the rules—facts to be set 19
out in (1) the body of an opposition or reply or (2) a statement of 20
facts. 37 C.F.R. § 41.104(b) (a rule may be waived); 37 C.F.R. 21
§ 121(d) (requiring a statement of facts). 22
32. Dalvey elected to set out its additional facts in the body of its 23
opposition and we find no fault in Dalvey having done so. 24
33. Moreover, Dalvey Opposition 5 plainly factually states that Bamberg 25
did not supply the required claim chart. Paper 217, page 2:1-2. 26

28

C. Analysis 1
A party seeking to add a new claim has the burden of establishing that the 2
new claim is supported by an adequate written description. 37 C.F.R. § 41.121(b). 3
Because of the burden, the moving party must establish that all, not just 4
some, limitations in the claim proposed to be added are supported by an adequate 5
written description. In other words, the claim as a whole—as opposed to a 6
limitation of the claim—must be supported. 7
The Director has determined that the burden is best satisfied with a claim 8
chart. 37 C.F.R. § 41.110(c)(2). 9
Contrary to the Director’s policy requiring a claim chart, Bamberg in its 10
statement of facts details only where some, but not all, of the claimed limitations 11
that are said to be supported in the descriptive portion of the specification. 12
Thus, Bamberg left Dalvey to figure out in the first instance whether the 13
proposed new claims are adequately supported—but that was not Dalvey’s burden. 14
Proposed new claim 39, to be added to involved Bamberg application 15
13/182,197, calls for “an adhesive layer with a softening point [that is] less than 16
about 220ºC . . . .” Paper 130, Appendix 3, page 11-5 (italics added). 17
For example, according to Bamberg, “[t]he temperature range for new 18
claim 39 is supported in the specification of the Bamberg [PCT] priority 19
application. Ex. 1001 at 6[5], 8[2], 7[3], 8[5], 10[2] and 18[6]. Paper 130, 20
page 18, Fact 22. 21
A first difficulty with Fact 22 is that we are not sure what is meant by 6[5]. 22
A second difficulty is that a computer word search of Ex. 1001 does not 23
reveal any mention of the word “softening.” 24
29

A third difficulty is that even if there were support for the limitation, 1
Bamberg still would not have satisfied its burden to show that the claim as a whole 2
is supported by an adequate written description. 3
A fourth difficulty is that the proposed new claim needs to be supported in 4
the involved Bamberg application. Showing that a claim is supported in a priority 5
application does not necessarily establish support in an involved application. 6
Bamberg’s election not to present a claim chart ultimately amounts to a 7
subtle way of shifting the burden of proof to Dalvey. 8
The shift becomes apparent from the remarks in the Bamberg reply 9
concerning its alleged “inability” to respond to Dalvey’s opposition due to an 10
alleged failure on the part of Dalvey to present additional facts in a statement of 11
facts. 12
To the extent that Bamberg had an “inability,” that “inability” is a self-13
imposed hardship brought on by Bamberg’s failure to supply a claim chart in the 14
first instance. 15
D. Decision 16
For the reasons given, Bamberg Motion 5 is denied. 17

VII. Dalvey Miscellaneous Motion 8 18
Dalvey Miscellaneous Motion 8 seeks exclusion of some of Bamberg’s 19
evidence. 20
However, with one exception, none of the evidence sought to be excluded 21
has been relied upon by Bamberg in connection with Dalvey Motion 3 or Bamberg 22
Motion 5. 23
30

The exception is a part of the direct declaration testimony of Dr. Williams 1
related to enablement. Ex. 2016, ¶¶ 36-38. 2
We have not found it necessary to consider ¶¶ 36-38. We did not find it 3
necessary to reach enablement because we found that Dalvey sustained its burden 4
with respect to Dalvey Motion 3 based on lack of written description. 5
Accordingly, we need not further consider Dalvey Miscellaneous Motion 8. 6
Dalvey Miscellaneous Motion 8 is dismissed without prejudice to further 7
consideration should it become necessary. 8

VIII. Bamberg Miscellaneous Motion 7 9
Bamberg Miscellaneous Motion 7 seeks exclusion of some of Dalvey’s 10
evidence. 11
However, none of the evidence sought to be excluded has been relied upon 12
in connection with Dalvey Motion 3 or Dalvey Opposition 5. 13
Accordingly, we need not further consider Bamberg Miscellaneous 14
Motion 7. 15
Bamberg Miscellaneous Motion 7 is dismissed without prejudice to further 16
consideration should it become necessary. 17
31

For Dalvey:

Devan V. Padmanabhan
Nathan J. Witzany
Paul J. Robbennolt
David A. Davenport
Winthrop & Weinstine
dpadmanabhan@winthrop.com
nwitzany@winthrop.com
probbennolt@winthrop.com
ddavenport@winthrop.com

For Bamberg:

Bruce J. Koch
Thorsten Schmidt
Schmidt, LLC
bkoch@schmidt-llc.com
tschmidt@schmidt-llc.com

Appendix 1
Copy of Paper 178
Fourth Redeclaration

-1-
BoxInterferences@uspto.gov Paper 178
Telephone: 571-272-4683 Entered: 22 May 2014

UNITED STATES PATENT AND TRADEMARK OFFICE
PATENT TRIAL AND APPEAL BOARD
____________________

JODI A. DALVEY and NABIL F. NASSER, Junior Party,
v.
ULF BAMBERG, PETER KUMMER and ILONA STIBUREK, Senior Party.
____________________

Interference 105,961 McK
Daley Patent 7,754,042 B2
v.
Bamberg Application 13/182,197
____________________

Interference 105,964 McK
Dalvey Patent 7,749,581 B2, Patent 7,766,475 B2
Patent 8,361,574 B2, and Patent 8,703,256 B2
v.
Bamberg Application 13/177,284
____________________

Patent Interference 105,966 McK
Dalvey Patent 7,771,554 B2 and RE 41,623 E
v.
Bamberg Application 13/207,236 and Application 13/223,541
____________________

Before: FRED E. McKELVEY, Administrative Patent Judge.

FOURTH REDECLARATION

-2-
I. Introduction 1
This Fourth Redeclaration is being entered to consolidate in one paper all 2
relevant information in (1) Interference 105,961, (2) Interference 105,964, 3
and (3) Interference 105,966. 4
Unless otherwise noted, a reference to a Paper is to a Paper filed in 5
Interference 105,964. 6
It is noted that in some patents inventor Nassar’s first name is listed as 7
“Nabil” whereas in other places in the record the name is listed as “Nabill”. 8
This fourth redeclaration uses the first name “Nabil”. 9
II. Declarations and previous redeclarations of the interferences 10
A. Interference 105,961 11
Interference 105,961 was declared on 26 September 2013. Interference 12
105,961, Paper 1. 13
B. Interference 105,964 14
Interference 105, 964 was declared on 26 September 2013. Paper 1. 15
A “first” redeclaration order was entered in Interference 105,964 on 16
27 November 2013. Paper 40. 17
C. Interference 105,966 18
Interference 105,966 was declared on 26 September 2013. Interference 19
105,966, Paper 1. 20
A “second” redeclaration order was entered in Interference 105,966 on 21
27 November 2013. Interference 105,966, Paper 42. 22
A “third” redeclaration order was entered in Interference 105,966 on 23
4 March 2014. Interference 105,964, Paper 124. 24

-3-
III. Papers in interferences 1
The file of Interference 105,961 contains Papers 1-40, as well as a transfer 2
order. 3
The file of Interference 105,966 contains Papers 1-45, as well as a transfer 4
order. 5
With the exception of transfer orders, since February of 2014, all papers in 6
all interferences have been entered as papers in Interference 105,964. 7
All papers will continue to be entered in Interference 105,964, until a final 8
decision and judgment is entered in Interference 105,964, at which time a copy of 9
the final decision and judgment will be entered in Interference 105,961 and 10
Interference 105,966. 11
As set out in this “fourth” redeclaration, Count 1 continues to appear in 12
Interference 105,964. Count 2 appears in Interference 105,961 (replacing Count 1 13
of that interference). Count 3 appears in Interference 105,966 (replacing original 14
Count 1 of that interference). 15
IV. Interference 105,961 16
A. Identification and order of the parties 17
1. Junior Party (1 patent) 18
Named Inventors: Jodi A. Dalvey, Minnesota 19
Nabil F. Nasser, Minnesota 20
21
Patent: US 7,754,042 B2 22
issued 13 July 2010 23
based on application 12/193,573 24
filed 18 August 2008 25
26
Patent Pub: U.S. Patent Publication 2008/0305253 A1 27
11 December 2008 28

-4-
1
Title: Method of image transfer on a colored base 2
3
Assignee: Jodi A. Schwendimann 4
5
2. Senior Party (1 application) 6
7
Named Inventors: Ulf Bamberg, Germany1 8
Peter Kummer, Switzerland 9
Ilona Stiburek, Switzerland 10
11
Application: Application 13/182,197, 12
filed 13 July 2011 13
14
Patent Pub: U.S. Patent Publication 2012/0120170 A1 15
17 May 2012 16
17
Title: Ink-jet transfer system for dark textile substrates 18
19
Assignee: Arkwright Advanced Coating, Inc. 20
21
B. Count, claims of the parties, and accorded benefit 22
1. Count 22 23
A method according to Claim 23 of Bamberg application 13/182,197 24
or 25
a method according to Claim 1 of Dalvey Patent 7,754,042. 26

1 The PTAB understands that inventor Bamberg now resides in Australia.

2 Count 2 replaces Count 1 of Interference 105,961. Original Count 1 of
Interference 105,961 called for a “device” but it is clear from the claims mentioned
in original Count 1 (now Count 2) that a method—not a device—is involved.

-5-
2. Claims of the parties 1
The claims of the parties are: 2
Dalvey: 1-22 3
Bamberg: 23-34 4
The claims of the parties corresponding to Count 2 are: 5
Dalvey: 1-22 6
Bamberg: 23-34 7
The claims of the parties not corresponding to Count 2 are: 8
Dalvey: None 9
Bamberg: None 10
3. Benefit 11
The parties are accorded the following benefit for Count 2: 12
Dalvey: Application 12/193,573, filed 18 August 2008 13
Application 12/034,392, filed 21 February 2008 14
Application 10/911,249, filed 04 August 2004 15
Application 09/541,845, filed 03 April 2000 16
Application 09/391,910, filed 09 September 1999 17
18
Bamberg: Application 13/182,197, filed 13 July 2011 19
Application 12/977,555, filed 23 December 2010 20
Application 09/980,466, filed 12 April 2006 21
Int’l Application IB99/00976, filed 01 June 1999 22
23
V. Interference 105,964 24
A. Identification and order of the parties 25
1. Junior Party (4 patents) 26
a. First patent 27
Named Inventors: Jodi A. Dalvey, Minnesota 28
Nabil F. Nasser, Minnesota 29

-6-
1
Patent: US 7,749,581 B2 2
issued 06 July 2010 3
based on application 12/193,578 4
filed 18 August 2008 5
6
Patent Pub: U.S. Patent Publication 2008/0305288 A1 7
11 December 2008 8
9
Title: Image transfer on a colored base 10
11
Assignee: Jodi A. Schwendimann 12
b. Second patent 13
Named Inventors: Jodi A. Dalvey, Minnesota 14
Nabil F. Nasser, Minnesota 15
16
Patent: US 7,766,475 B2 17
issued 03 August 2010 18
based on application 12/193,562 19
filed 18 August 2008 20
21
Patent Pub: U.S. Patent Publication 2008/0302473 A1 22
11 December 2008 23
24
Title: Image transfer on a colored base 25
26
Assignee: Jodi A. Schwendimann 27
c. Third patent 28
Named Inventors: Jodi A. Dalvey, Minnesota 29
Nabil F. Nasser, Ohio 30
31
Patent: US 8,361,574 B2 32
issued 29 January 2013 33
based on application 12/875,445 34
filed 03 September 2010 35

-7-
1
Patent Pub: U.S. Patent Publication 2010/0323132 A1 2
23 December 2010 3
4
Title: Image transfer on a colored base 5
6
Assignee: Jodi A. Schwendimann 7
d. Fourth patent 8
Named Inventors: Jodi A. Schwendimann, Minnesota 9
Nabil F. Nasser, Ohio 10
11
Patent: US 8,703,256 B2 12
issued 22 April 2014 13
based on application 13/745,995 14
filed 21 January 2013 15
16
Patent Pub: U.S. Patent Publication 2013/0142970 A1 17
06 June 2013 18
19
Title: Image transfer on a colored base 20
21
Assignee: Jodi A. Schwendimann 22
2. Senior party (1 application) 23
24
Named Inventors: Ulf Bamberg, Germany 25
Peter Kummer, Switzerland 26
Ilona Stiburek, Switzerland 27
28
Application: Application 13/177,284, 29
filed 06 July 2011 30
31
Patent Pub: U.S. Patent Publication 2012/0092429 A1 32
19 April 2012 33
34
Title: Ink-jet transfer system for dark textile substrates 35
36

-8-
Assignee: Arkwright Advanced Coating, Inc. 1
2
B. Count, claims of the parties, and accorded benefit 3
1. Count 1 4
An image transfer article according to Claim 30 of Bamberg 5
application 13/177,284 6
or 7
an image transfer article according to Claim 1 of Dalvey Patent 7,749,581 8
or 9
an ink-jet transfer article according to Claim 1 of Dalvey Patent 7,766,475 B2 10
or 11
an image transfer article according to Claim 15 of Dalvey Patent 8,361,574 B2 12
or 13
an image transfer article according to Claim 1 of Dalvey Patent 8,703,256 B2. 14
2. Claims of the parties 15
The claims of the parties are: 16
17
Dalvey: 1-31 (US Patent 7,749,581 B2) 18
1-21 (US Patent 7,766,475 B2) 19
1-20 (US Patent 8,361,574 B2) 20
1-20 (US Patent 8,703,256 B2) 21
22
Bamberg: 30-49 23
24

-9-
The claims of the parties corresponding to Count 1 are: 1
Dalvey: 1-31 (US Patent 7,749,581 B2 2
1-21 (US Patent 7,766,475 B2) 3
1-20 (US Patent 8,361,574 B2) 4
1-20 (US Patent 8,703,256 B2) 5
6
Bamberg: 30-49 7
The claims of the parties not corresponding to Count 1 are: 8
Dalvey: None 9
Bamberg: None 10
3. Benefit 11
The parties are accorded the following benefit for Count 1: 12
Dalvey (US Patent 7,749,581 B2): 13
Application 12/193,578, filed 18 August 2008 14
Application 12/034,932, filed 21 February 2008 15
Application 10/911,249, filed 04 August 2004 16
Application 09/541,845, filed 03 April 2000 17
Application 09/391,910, filed 09 September 1999 18
19
Dalvey (US Patent 7,766,475 B2): 20
Application 12/193,562, filed 18 August 2008 21
Application 12/034,932, filed 21 February 2008 22
Application 10/911,249, filed 04 August 2004 23
Application 09/541,845, filed 03 April 2000 24
Application 09/391,910, filed 09 September 1999 25
26
Dalvey (US Patent 8,361,574): 27
Application 12/875,445, filed 03 September 2010 28
Application 10/911,249, filed 04 August 2004 29
Application 09/541,845, filed 03 April 2000 30
31

-10-
Dalvey (US Patent 8,703,256): 1
Application 13/745,995, filed 21 January 2013 2
Application 12/875,445, filed 03 September 2010 3
Application 10/911,249, filed 04 August 2004 4
Application 09/541,845, filed 03 April 2000 5
Application 09/391,910, filed 09 September 1999 6
7
Bamberg: 8
Application 12/977,555, filed 23 December 2010 9
Application 09/980,466, filed 12 April 2006 10
Int’l Application IB99/00976, filed 01 June 1999 11
VI. Interference 105,966 12
A. Identification and order of the parties 13
1. Junior Party (1 patent and 1 reissue) 14
a. Patent 15
Named Inventors: Jodi A. Dalvey, Minnesota 16
Nabil F. Nasser, Minnesota 17
18
Patent: US 7,771,554 B2 19
issued 10 August 2010 20
based on application 12/034,932 21
filed 21 February 2008 22
23
Patent Pub: U.S. Patent Publication 2008/0149263 A1 24
26 June 2008 25
26
Title: Image transfer on a colored base 27
28
Assignee: Jodi A. Schwendimann 29
30
b. Reissue patent 31
Named Inventors: Jodi A. Schwendimann 32
a/k/a Jodi A. Dalvey, Minnesota 33
Nabil F. Nasser, Minnesota 34

-11-
1
Patent: RE 41,623 E, issued 07 September 2010 2
(US Patent 6,884,311 issued 26 April 2005) 3
based on application 12/218,260 4
filed 11 July 2008 5
6
Title: Method of image transfer on a colored base 7
8
Assignee: Jodi A. Schwendimann 9
2. Senior Party (2 applications) 1
2
a. First application 3
4
Named Inventors: Ulf Bamberg, Germany 5
Peter Kummer, Switzerland 6
Ilona Stiburek, Switzerland 7
8
Application: Application 13/223,541, 9
filed 01 September 2011 10
11
Patent Pub: U.S. Patent Publication 2012/0105560 A1 12
03 May 2012 13
14
Title: Ink-jet transfer system for dark textile substrates 15
16
Assignee: Arkwright Advanced Coating, Inc. 17
b. Second application 18
Named Inventors: Ulf Bamberg, Germany 19
Peter Kummer, Switzerland 20
Ilona Stiburek, Switzerland 21
22
Application: Application 13/207,236, 23
filed 10 August 2011 24
25
Patent Pub: U.S. Patent Publication 2012/0120132 A1 26
17 May 2012 27
28
Title: Ink-jet transfer system for dark textile substrates 29
30
Assignee: Arkwright Advanced Coating, Inc. 31
B. Count, claims of the parties, and accorded benefit 32
1. Count 3 33
A method according to Claim 1 of Bamberg application 13/207,236, 34
or 35

13

a method3 according to Claim 1 of Bamberg application 13/223,541, 1
or 2
a method according to Claim 1 of Dalvey RE 41,623 E, 3
or 4
a method according to Claim 1 of Dalvey Patent 7,771,554 B2. 5
2. Claims of the parties 6
The claims of the parties are: 7
Dalvey: 1-17 (RE 41,623 E) 8
1-14 (US Patent 7,771,554 B2) 9
Bamberg: 1-14 (Application 13/207,236) 10
1-17 (Application 13/223,541) 11
The claims of the parties corresponding to Count 3 are: 12
Dalvey: 1-17 (RE 41,623 E) 13
1-14 (US Patent 7,771,554 B2) 14
Bamberg: 1-14 (Application 13/207,236) 15
1-17 (Application 13/223,541) 16
17
The claims of the parties not corresponding to Count 3 are: 18
Dalvey: None 19
Bamberg: None 20

3 Count 3 replaces Count 1 of Interference 105,966. Count 1 of Interference
105,966 calls for a “device” but it is clear from the claims mentioned in Count 1
(now Count 3) that a method—not a device—is involved.

14

3. Benefit 1
The parties are accorded the following benefit for Count 3: 2
Dalvey (RE 41,623 E): 3
Application 12/218,260, filed 11 July 2008 4
Application 09/541,845, filed 03 April 2000 5
Application 09/391,910, filed 09 September 1999 6
7
Dalvey (US Patent 7,771,554 B2): 8
Application 12/034,932, 21 February 2008 9
Application 10/911,249, filed 04 August 2004 10
Application 09/541,845, filed 03 April 2000 11
Application 09/391,910, filed 09 September 1999 12
13
Bamberg (both applications): 14
Application 12/977,555, filed 23 December 2010 15
Application 09/980,466, filed 12 April 2006 16
Int’l Application IB99/00976, filed 01 June 1999 17
18

15

cc (via Electronic mail): 1
2
Junior Party Dalvey: 3
4
Devan V. Padmanabhan (dpadmanabhan@winthrop.com) 5
Nathan J. Witzany (nwitzany@winthrop.com) 6
7
Senior Party Bamberg: 8
9
Bruce J. Koch, Esq. (bkoch@schmidt-llc.com) 10
Thorsten Schmmidt, Esq. (tschmidt@schmidt-llc.com) 11

Appendix II
Exhibit 3001
,..pA~~y V. BAMBERG
DATE FILED: 11/03/LB,i,rJJB£RG EXHIBIT 1001
DOCUMENT NO: ~ntested Case 105,964 (JGN)
~nTransCo, Inc.
INTERNATIONAL TRANSLATION COMPANY
TRANSLATIONS FROM AND INTO ALL LANGUAGES PREPARED BY SPECIALISTS P.O. BOX 239
LYNNFIELD, MA 01940
(781) 334-3123
FAX (781) 334-4445
VERIFICATION OF TRANSLATION
Title of Translated Document: Ink-jet transfer systems for dark
textile substrates
PCT/IB99/00976
Original Language of Translated Document: German

The undersigned declares that:

I am a professional translator representing InTransCo, Inc., with English as a native

language and German as an acquired language. I have over thirty years of full-time

translating experience in general, technical, chemical and related fields.

To the best of my knowledge and belief, the attached is a true, accurate and complete

English translation of the above-referenced German document.

~-;;'1~
Date:__1=-.;1:.!../1.:..:.1-=-1=3______Signature:
A. M. Russell
Board Assigned Page #1
Ink-jet transfer systems for dark textile sub­
strates
Technical Field
The present invention relates to an ink-jet
transfer system or an ink-jet transfer print, respectively,
according to the preamble of claim 1, as well as a method
according to the independent claims 14 and 16.
Background Art
Transfer prints enjoy a big popularity, as they
allow the application of any graphic presentation,
terns, images or type faces, in particular on clothes like
T-shirts, sweatshirts, shirts or also other textile sub­
strates like for instance mouse-pads. Of particular inter­
est are ink-jet transfer systems (ink-jet transfer prints),
providing the potential users with the possibility of an
individual selection of electronically processible and by
means of graphic presentations which can be stored on a
computer, and which can eventually be printed or ironed on,
respectively, onto his desired garment or another textile
substrate (support), respectively, by the user himself.
Thereby, in a first step, the red, electronically pro­
cessible image is produced by the user of the transfer
print by means of a computer, which is transmitted from the
computer to a suitable printer, for example an ink-jet
printer, which in turn prints the desired image onto the
transfer system. The transfer print thus prepared has to
display a structure which allows the further use for nt­
ing onto for example a textile substrate. By means of a
suitable transfer print, the red graphic presentation
is brought to adhesion onto the desired textile substrate.
Usually, graphic presentations are applied under supply of
heat and pressure by a hot copy, and optionally by a prior
cold copy onto the desired textile substrate.
Board Assigned Page #2
In recent years, efforts have been undertaken
in order to improve the hot transfer systems as well as to
enable the printing of the desired graphic presentation on­
to the textile substrate with a satisfactory quality.
For instance, US-5,242,739 describes a heat­
sensitive transfer paper which is capable of receiving an
image and comprises the following components: a) a flexible
cellulose containing, unwoven, textile-like paper which has
a superior and an inferior surface and b) a melting trans­
fer-film layer which is capable of receiving an image, and
which is situated onto the superior surface of the paper
support, c) as well as optionally an intermediary hot-melt
layer. The film layer is composed of about 15 to 80 weight­
% of a film-forming binder and about 85 to about 20 weight­
% of a powder like thermoplastic polymer, whereby the film­
forming binder and the thermoplastic polymer have a melting
point of between about 65°C and 180°C.
US-5,501,902 represents a further development
of US-5,242,739, which is composed of a two-layer system as
well, whereby, however, for the improvement of the printing
image, an ink viscosity agent is further contained. Fur­
thermore, in the transfer print of US-5,501,902, preferably
a cationic, thermoplastic polymer is contained for the im­
provement of the ink-absorbing capacity.
As pigments for the receipt of the ink dye­
stuff, in the prior art, usually polyesters, polyethylene
wax, ethylen~-vinylacetate copolymers, and as a binder,
polyacrylates, styrene-vinylacetate copolymers, nitrile
rubber, polyvinylchloride, polyvinylacetate, ethylene acry­
late copolymers and melamine resins are mentioned.
In WO 98/30749 (Oce-Switzerland) an ink-jet
transfer system is described, which comprises a carrier ma­
terial, a hot-melt layer being applied onto the carrier ma­
terial and at least an ink-receiving layer. Thereby, the
ink-receiving layer is a mixture of a highly porous pigment
Board Assigned Page #3
and a binder, whereby the molecules of the pigment and op­
tionally of the binder as well as optionally of the hot­
melt are capable of forming chemical bonds with the dye­
stuff molecules of the ink.
A special difficulty, however, is associated
with transfer prints, which shall be applied onto a dark
textile support. Since the dyestuffs are transparent
against dark backgrounds, i.e. maximally perceptible as
shadow, first of all a light contrast background has to be
created to make the desired colored image better visible.
l' According to the prior art, for this, in the course of a 2­
12 step method or a one-step method, a transfer print is ap­
\~ plied onto a dark piece of textile. In case of the conven­
I~ tional 2-step method, a white textile fabric equipped with
)5 a hot-melt adhesive on the back is laminated with a trans­
I~ fer foil that was imprinted by a xerographic method (or
11 ink-jet) and then pressed with the hot-melt adhesive side
I~ on the dark garment to be imprinted (T-shirt) by means of a
I~ transfer press at ca. IS0°C and a pressure of about 7 bar.
to The image side with the thin foil (transfer layer) on it
zt thereby is protected by a silicone paper. After the trans­
t~ fer operation that lasts about 10 seconds, the silicone pa­
Z} per is removed. The adhesion of the transfer print system
2~ on the dark garment is achieved by means of a polyethylene
lS or polyester/polyamide textile adhesion (i.e. a hot-melt
z~adhesive) of the contrast support on the textile substrate.
t1 The whole system is felt to be unpractical by
2~the user in so far as one needs a laminator and/or a tex­
l~ tile transfer press for the realization of the method,
~owhereby in particular the washproofness or the adhesion of
31 the white contrast support on the dark piece of textile,
J~respectively, still is particularly unsatisfactory and in
3; addition is appreciably impaired with each washing.
The known systems that are usable by means of a
one-step method are based on a white, thick transfer foil
Board Assigned Page #4
with a thickness of about 400 to 600 ~m which can be im­
printed by an ink-jet method or a xerographic method and
subsequently transferred on a dark piece of textile by
means of a transferred press. The disadvantages of this
system are in particular the unsatisfactory image quality
immediately after the transfer on the piece of textile. The
images look faint and blurred. Furthermore, the whole sys­
tem is comparatively thick, makes an unaesthetic impression
~ (armor-like) and it is not breathable. An additional major
10 disadvantage is the fact that the user who does not have
/1 available a transfer press and consequently switches to the
I~ use of a commercially available iron is confronted with a
/) sustainably impaired adhesion of the transfer foil on the
l~ piece of textile. This loss of adhesion is further acceler­
J~ ated by repeated washings.
f~ A further disadvantage of both conventional
print systems is their application process on the textile
substrate, whereby the application of a contrast background
on the piece of textile under markedly high pressure cannot
be performed by private persons without adequate equipment.
The pressures of at least about 7 bar (= 7xl05 Pal often re
quired for this can only be generated by a cost-intensive
transfer press, whereby the users are mainly interested in
a simple ironing on by means of a commercially available
iron. The above mentioned disadvantages did significantly
lead to the consequence that the currently sold transfer
print systems did not become widely distributed in the mar­
ket as desired, or were not very successful, respectively.
On the contrary there still exists a great need for satis­
factory systems that do not have the above-mentioned disad­
vantages.
Disclosure of the Invention
Hence, it was one objective of the present in­
vention to provide a textile transfer print system which at
Board Assigned Page #5
l least partly avoids the above-mentioned disadvantages. In
Z particular, a transfer print for a dark le sup­
3 port should be provided which on the one hand ds the
4 desired high contrast, a high resolution, and on the other
hand avoids the unsatisfactory washproofness due to insuf­
ficient adhesion of the transfer nt on the textile sup­
port, and finally which can be applied on a piece of tex­
tile as uncomplicated and efficiently as possible i.e. in
the course of a one-step method by means of an iron.
Furthermore, it was also an objective of the
present invention to provide a method for the production of
textile transfer print systems for dark textile substrates
with high washproofness.
Finally, it was an objective of the present in­
vention to provide a printing process, whereby by means of
textile transfer print systems for dark text substrates,
graphic presentations with high quality or high washproof­
ness, respectively, can be applied on textile substrates in
a single step.
The above-mentioned objectives are resolved ac­
cording ,to the independent . Preferred embodiments
are mentioned in the dependent claims.
The ink-jet transfer system according to the
present invention comprises or is composed of, respective­
ly, a carrier material (base layer), an adhesive layer ap­
plied on the carrier material preferably a hot-melt layer
Ll which has dispersed spherical (globular) polyester parti­
2S cles of a granular size of less than 30 ~, a white back­
t~ ground layer being applied on the adhesive layer and at
30 least one ink-receiving layer being applied on the back­
~ \ ground layer. The white background layer which is found di­
32 rectly on the adhesive layer, according to the present in­
33 vention, comprises or is composed of permanently elastic
3, plastics which are non-fusible at ironing temperatures
;s (i.e. up to about 220°C) and which are filled with white
Board Assigned Page #6
pigments also non-fusible (up to about 220°C). The elas
tic plastics must not melt at ironing temperatures in order
not to provide with the adhesive layer, e.g. the hot-melt,
which provides the adhesion to the textile substrate, an
undesired mixture with impaired (adhesive and covering)
properties. Furthermore, the white background has to
be elastic in order not to lead to a brittle fracture by
subsequent mechanical stresses. Elasticity, in the sense of
the present invention, means an expansion of at least 200%,
preferably of between 500-1000% and in particular prefera­
bly of about 800%.
Preferred elastic plastics for the white back­
ground layer are selected from the group comprising the
polyurethanes, polyacrylates or polyalkylenes or also natu­
ral rubber (latex), respectively. The most preferred elas­
tic astics contain or are composed of polyurethanes.
11 Suitable pigments are only those which do not
r 8 melt at ironing on temperatures. The filled white layer or
the polymers contained therein, respectively, such as e.g.
polyurethane must not melt, because otherwise the white
pigments would sink or penetrate, respectively, into the
textile substrate. Associated with this would be a reduc­
tion or even a destruction, respectively, of the white
background color which according to the invention shall be
provided to provide a background for dark prints. Particu­
larly preferred white gments are inorganic pigments se­
lected from the group comprising BaS04' ZnS, Ti02 , ZnO, SbO.
Also organic pigments are usable for the white background
layer as long as are non-fusible at ironing on temper­
30 atures. These pigments can be blended alone or also in a
" mixture with other non-fusible (up to 220°C) carrier agents
2tsuch as for example silicates or aluminates.
33 Thus, the present invention succeeds in provid­
3~ ing a transfer system which has a white background layer in
3S the print system itself, i.e. between the adhesive layer
Board Assigned Page #7
\ and the ink-receiving layer, whereby the entire system, in
2 spite of the non-fusible white background layer, surpris­
3 ingly fulfills the following requirements:
a) All of the 4 chemically different layers are
compatible, particular chemically, in the
course of the coating process, as well as the
melting process (the ironing onto the textile
substrate). There occurs no beading or de­
tachment, respectively, of the white back­
ground layer from the adhesive layer and/or
the ink-receiving layer from the white back­
ground layer.
b) The 4 chemically different layers furthermore
show a good adhesion to each other after pro­
duction of the transfer system so that there
is no splintering off or detachment, respec­
tively, of single layers of the transfer sys
tem that is ironed on the textile substrate.
c) The transfer system shows also an excellent
adhesion and elasticity on the textile sub­
strate, particularly after ironing on the
textile substrate. Said elasticity is of
great importance since the ironed-on_transfer
system should not become brittle and should
not effect a sustainable impairment of the
graphic presentation on the textile sub­
strate. Particularly in case of sports
stresses (e.g. pulling at or crumpling of the
T-shirt, respectively) the image imprinted on
the textile support has to adhere tightly.
d} Finally, the inventive transfer system is
washable as a composite on the textile sub­
strate without adversely affecting the color
fastness as well as the adhesion on the tex­
tile substrate.
Board Assigned Page #8
~ The glued lamellar structure is in a way a
Z sandwich structure in which the white background layer is
3 glued to the textile substrate, whereby no mixing of the
~ background layer with the adhesive layer, e.g. a hot-melt
~ layer, by a melting process is possible and the entire sys­
tem is nevertheless flexible enough that the graphic
presentation printed on the ink-receiving layer cannot be
detached by mechanical stresses.
The adhesive layer has to be essentially or
completely fusible and must only be adhesive in a fused
condition. In a very particularly preferred embodiment, the
adhesive layer which is found directly on the carrier mate­
rial is a pure hot-melt layer. The hot-melt layer is essen­
tially a wax-like polymer which is easily fusible and thus
can for example be transferred onto the textile substrate
together with the imprinted ink-receiving layer by ironing
\"1 on. Due to its wax-like properties, the hot-melt layer pri­
1& marily effects the adhesion to the textile substrate. On
\4 the other hand, the hot-melt layer also has to mediate a
to good adhesion to the white background layer which is chemi­
2\ cally totally different (not wax-like, nonfusible). This is
L£.. inventively achieved in that in the hot-melt layer, very
l} small spherical polyester particles of a granular size of
t~ less than 30 ~m are spersed. These spherical polyester
t5 particles in turn are chemically more related to the white
~~ background layer (than the pure hot-melt wax components) so
t1 that during melting they can form or enhance, respectively,
2~ the adhesion to the white background layer. A particle size
of less than 30 ~m is required so that the particles do not
bulge out from the layer and thus cause problems during
coating. The spherical polyester particles are preferably
obtained for example by stirring in cryo-ground polyester
together with the wax-like hot-melt compounds during the
production of a dispersion and melting small drops of up to
30 ~m (emulsion). After the cooling, the drops solidi and
Board Assigned Page #9
small beads develop, i.e., a dispersion. A preferred hot­
melt compound is for example an ethylene acrylic acid co­
polymer or a PU dispersion. Together with the spherical
,..
polyester particles of a granular size of less than 30 ~,
said compound is processed to a hot-melt layer dispersion.
As adhesive layer, besides a pure hot-melt, al­
so a hot-melt adhesive dissolved in a solvent can be used.
For example a solvent-containing adhesive based on polyam­
ides or polyethylenes which on the one hand effects a good
adhesion to the textile substrate and on the other hand to
the white background layer are suitable for the realization
of the present invention.
In a preferred embodiment, the adhesive layer,
however, contains or is composed of a pure hot-melt since
said hot-melt forms the desired adhesion to the white back­
ground layer and to the textile substrate by means of a
comparatively simple external controlling means, i.e. by
means of ironing on, in a convenient but efficient manner.
The ink-receiving layer (ink layer) is situated
on the white background layer and primarily comprises a
highly porous pigment and a binder. The highly porous pig­
ment provides on the one hand a purely mechanical uptake of
the ink during printing of the desired graphic presentation
whereby a maximal porosity ensures an especially high ab­
sorbability. Binders are necessary to bind the highly po­
rous pigments on the product surface to allow the pro­
cessing (imprinting) of the ink-jet transfer system.
In principle, all known, mainly highly porous
pigments are suitable as ink-receiving layer for the pur­
poses of the present invention: Examples are polyesters,
PE-wax, PE-powders, ethylene-VAC copolymers, nylon, epoxy
compounds. Suitable as binders are polyacrylates,
butadiene copolymers, ethylene-VAC copolymers, nylon, ni­
trile rubber, PVC, PVAC, ethylene-acrylate-copolymers.
Board Assigned Page #10
Preferably the at least one ink-receiving layer
comprises a mixture of a highly porous pigment and a binder
whereby more preferably the molecules of the highly porous
pigment and optionally of the binder and optionally of the
adhesive , e.g. the hot-melt layer, are capable of
forming essentially covalent bonds to the dyestuff mole­
cules of the ink. This has the advantage that the respec­
tive dyestuffs, after printing on the textile substrate,
for instance by ironing on, are no longer primarily mechan­
ically bonded, but as a result of - essentially covalent ­
bonds are chemically bonded to the molecules of the pigment
and of the binder and optionally of the hot-melt. This is
achieved in that the molecules of the pigment and optional­
ly of the binder and optionally of the hot-melt have avail­
able reactive groups that are capable of forming covalent
bonds to the also reactive groups of the dyestuff molecules
of the ink.
The essentially covalent bonds between the dye­
stuff molecules of the ink and the molecules of the pigment
as well as of the binder are, among others, formed upon
providing energy, for instance by ironing on (at about
190°C) the inventive ink-jet transfer system on the textile
substrate.
For the printing of the ink-jet transfer sys­
for instance by means of an ink-jet printer, in the
market, usually acid dyestuffs are used in printer inks,
for example azo-dyestuffs according to formula I.
OHw
I NHR
N=N
()­-I­
x
y z
Board Assigned Page #11
w COOH
x 0:::; H or COOH
y & z H, COOH or S03H
R H, CH2COOH or CH2CH2COOH (I)
The molecules of the ink dyestuffs are primari
ly present as anions in solution and also have available
reactive groups which allow the formation of chemical bonds
to the reactive groups of the pigment molecules as well as
optionally the binder molecules. The reactive groups are
usually one or more sulfonate groups or carboxylate groups
per dyestuff molecule. Under suitable conditions, for in­
stance through heating during the ironing on of the ink-jet
transfer system onto the textile substrate, covalent or al­
so rather ionic bonds or intermediary valence bonds, re­
spectively, can be formed between said sulfonate groups or
carboxylate groups, respectively, and the reactive groups,
for example amino groups, of the pigment or binder, respec­
tively. But in particular, the covalent bonds of the dye­
stuff molecules to the molecules of the ink-receiving lay­
er, with formation of e.g. sulfonamides ( S02NH-R) or amide
groups (-CONH-R), respectively, (besides rather amphoteric
S03 NH3+-R groups) are particularly preferred.
As an example, the poly[l,2-bis(aminomethyl­
cyclohexyl)ethane-adipic acid amide] of the formula (II) is
mentioned which generates essentially covalent bonds (sul­
fonamide groups or acid amide groups, respectively) with
its terminal amino groups upon reacting with the acid
groups of an azo-dyestuff.
(II)

Board Assigned Page #12
Modes for ca out the ion
In a preferred embodiment, the ink-receiving
layer of the inventive ink-jet transfer system is composed
of a highly porous pigment and a binder, whereby at least
one of the two components, in particular the pigment being
present in bigger amounts has available reactive amino
groups that are capable of forming essentially covalent
bonds to the dyestuff molecules of the liquid ink.
In a particularly preferred embodiment of the
present invention, the ink-receiving layer comprises a
highly porous polyamide pigment and a binder composed of a
soluble polyamide, whereby the terminal, free amino groups
of the polyamide pigment and of the polyamide binder are
capable of fixing reactive groups, for example sulfonate
groups or carboxylate groups of the dyestuff molecules. Be­
cause of that, with the pigment component as well as the
binder component, a chemical fixation of the dyestuff mole­
cules can be achieved.
Besides the inventive requirement of the capa­
bility of the formation of essentially covalent bonds be­
tween the dyestuff molecules of the ink and the molecules
of the pigment as well as the binder, the ink-jet transfer
system according to the present invention has to have a
high absorption capacity or uptake, respectively, of ink in
order to guarantee a clear print image. This requirement is
achieved by providing a pigment, preferably a polyamide
pigment with a high porosity.
Preferred polyamide pigments which are used for
the ink-jet transfer systems according to the present in­
vention preferably display a spherical, for instance a
bular geometry and an interior surface which is as high as
possible. The granular sizes of the used polyamide pigments
are in a range of about 2 ~ and about 45 ~m, whereby a
Board Assigned Page #13
range of 2 to 10 ~m is particularly preferred. The bigger
the granular size of the polyamide pigments, the more the
surface of said pigments is closed and thus the ink­
receiving capacity is reduced or even rendered impossible,
respectively. The interior surface of the highly porous
pigment amounts to at least about 15 m2 /g; preferably it is
between about 20-30 m2/g.
It turned out that in particular a polyamide
pigment with the trade name "Orgasol" displays the required
properties, in particular the high-grade porosity.
A highly porous polyamide pigment with an inte­
rior surface of at least about 15 m2 /g and a granular size
of about 2 ~ and about 45 ~ is obtained by means of an
anionic polyaddition and a subsequent controlled precipita­
tion process. In contrast to the conventional production
methods in which a polyamide condensation product, for ex­
ample as a granulate, is prepared, which is then milled,
the polyamide pigments are actually grown and the growth of
the pigments is ceased upon reaching the desired granular
size. 85-95 % of the polyamide pigments thus obtained show
the desired form and granular size, whereby only maximally
15 % have a smaller or bigger granular size.
For an ink-receiving layer with highly porous
polyamides being used as pigments, the binder preferably is
composed of a polyamide as well. The polyamide used as a
binder is different concerning its properties from the pol
yamide gment insofar as it is employed as a solution and
thus does not have to comply with specific form require­
ments. The use of polyamide as a binder is therefore less
critical. It has only to be soluble in a suitable solvent,
for instance alcohol or a alcohol-water mixture, respec­
tively, and preferably has available free terminal amino
groups by means of which dyestuff molecules, for example
sulfonate groups of azo-dyestuffs or ester groups can be
fixed.
Board Assigned Page #14
The ratio of the highly porous pigment and the
binder in the ink-receiving layer of the inventive ink-jet
transfer system amounts to between about 5:1 and 1:1, pref­
erably 3:1 and 2:1 and very much preferred 2.4:1.
The hot-melt layer which is preferably used in
the ink-jet transfer system according to the present inven­
tion as adhesive layer is found directly on the removable
carrier material and serves to transfer the graphic presen­
tation imprinted by the ink-jet printer on the textile sub­
strate and to ensure an adhesion to the white background
layer. Said transfer is, for instance, effected by a cold
copy, i.e. by ironing on, cooling down and removing the
\3 carrier layer (baking paper). During the ironing on, the
,~ hot-melt layer and the ink-jet receiving layer, but not the
15 white background layer are molten. This way, the image im­
I~ printed on the ink-receiving layer is transferred on the
11 textile substrate without any fusing-associated distor­
\%tions.
The hot-melt preferably used as adhesive layer
in contrast to the highly porous pigment, binder as well as
the background layer, is essentially wax-like, i.e. it can
be fused. Usually, hot-melts melt in a range of about 100­
120°C while the highly porous pigments preferably melt in a
range of 120-180°C, preferably 140-160°C. A usual hot-melt
is for instance an ethylene acrylic acid copolymer disper­
sion.
Further additives can be contained in the ink­
jet transfer system according to the present invention,
however, upon the use of such additives, it has to be paid
attention that their use does not impair the washproofness
of the eventually obtained transfer print. Because of pro­
cess-technology reasons, for instance, it is reasonable to
use a dispers additive for organic pigments in the prep­
aration of the inventive ink-jet transfer system.
Board Assigned Page #15
As a support (cover layer) for the cold copy,
nearly any separating paper can be used, preferably a heat­
resisting paper, for example a silicone paper is used.
Besides the ink-jet transfer system itself, an
additional aspect of the present invention is a method for
~ its preparation. The coating method comprises the following
1 steps:
& a) application of an adhesive layer, preferably
~ a hot-melt layer, which has dispersed spherical polyester
10 particles of a granular size of less than 30 ~ onto a car­
\ 1 rier material, for instance silicone paper, by means of a
(2 coating means for instance a coating machine, whereby a
13 layer thickness of about 30 to 40 ~m is adjusted, thereaf­
l'i ter drying the hot-melt layer, and
\~ b) application of a white background layer com­
\~ posed of elastic plastics which are non-fusible at ironing
II on temperatures (i.e. up to about 220°C), and which are
filled with white, preferably inorganic, pigments onto the
hot-melt layer, preferably with a resulting layer thickness
of about 20 35 ~,
c) application of at least one ink-receiving
layer dispersion onto the white background layer, and
d) drying the ink-jet transfer system.
The double/multiple application of the ink­
receiving layer according to step c) provides the advantage
that a smooth and even surface as well as an ink-receiving
layer with a balanced thickness is -formed, whereby the
printing process or the resulting print image, respective­
ly, is influenced in a positive way.
First, the graphic presentation to be applied
onto the textile substrate is laterally correctly printed
onto the ink-jet transfer system thus obtained by a usual
printer, e.g. an ink-jet printer (ink-jet-plotter), cut
out, removed from the support (e.g. silicone paper), cov-
Board Assigned Page #16
\ ered with baking paper and afterwards ironed onto the de
l sired textile substrate, for instance a T-shirt, at a tem­
3 perature of between about 160 and 220°C, preferably of
~ 170°C, during at least 10 seconds. The lowest is the
carrier material which is removed and discarded before the
application of the graphic presentation. As the preferred
cover paper, a heat-resistant silicone paper (baking paper)
is used. The printed graphic presentation obtained in such
a way (cold copy) is smooth and faint.
In the following, the present invention shall
be illustrated by two examples whereby the examples are not
to be construed as limiting the scope of protection.
1
ion of an ink­ et transfer stem
In a first step, the hot-melt layer is applied
onto a carrier material: Thereby, a silicone paper of a
layer thickness of about 0.1 mm is coated with an ethylene
acrylic acid copolymer containing dispersed spherical poly­
ester particles of a granular size of between 5-25 ~. The
ratio of ethylene acryl acid copolymer and spherical pol­
yester particles is about 60:40 and the resulting layer
thickness of the hot-melt layer is about 30 ~m.
Subsequently, a white background layer (polyu­
rethane foil) with a thickness of about 40 ~ containing
about 15 weight-% Ti02 is applied onto the silicone paper
coated with the hot-melt.
On said elastic background layer of polyure­
thane/Ti02 .a dispersion containing the ink-receiving layer
is applied in two steps. In the first step, a layer thick­
ness of 15 ~m is applied and in the second step, a layer
thickness of 15 ~m is applied, whereby a total layer thick­
ness of the ink-receiving layer of 30 ~ results.
Board Assigned Page #17
The ink-receiving layer was previously prepared
as follows: an ethanol/water mixture in the ratio of 3:1 is
placed in a vessel and a soluble polyamide binder is dis­
solved therein under heating to 45°C. Afterwards the highly
S" porous polyamide pigment "Orgasol 3501 EX D NAT1" with a

granular size of 10 ~ as well as an interior surface of

about 25 m2 /g pigment is dispersed in the solution.

In order to stabilize the dispersion, a dis­
persing additive for organic pigments commercialized by the
\0 Company Coatex with the product designation COADIS 123K is
introduced and the dispersion is stirred during 10 minutes
at room temperature.
On the coating machine, the solvent is allowed
to evaporate in order to obtain a solid ink-receiving layer
,S on which the desired graphic presentation can be printed by
means of an ink-jet printer.
The desired foils can be cut arbitrarily ac­
cording to the required needs.
Example 2
20 Use of an ink-jet transfer system for printing
The ink-jet transfer system prepared in example
1 is used in order to print a graphic presentation on a T­
shirt. Thereby, in a first step, the desired electronically
processible and stored graphic presentation is printed by a
~~ computer by means of an ink-jet printer in a laterally cor­
rect way onto the sheet which has been obtained as the ink­
jet transfer system in example 1.
Afterwards, the print is removed and put with
the white side onto the desired side of the selected T­
30 shirt and ironed on by means of a hot iron (baking paper +
31 temperature of about 190°C) during 10 seconds. Afterwards,
32 the T-shirt thus processed is cooled down to about room
Board Assigned Page #18
temperature and the baking paper, i.e. the silicone paper
is removed. The image thus obtained is shining and matt.
While in the present invention, preferred em­
bodiments of the invention are described, it has clearly to
be pointed out that the invention is not limited thereto
and may be otherwise practiced in the scope of the follow­
ing claims.
Board Assigned Page #19
Claims
1. An ink-jet transfer system, characterized in
that it comprises or is composed of
a) a carrier material,
b) an adhesive layer being applied onto said
carrier material which has dispersed spherical polyester
particles of a granular size of less than 30 ~m,
~ c) a white background layer composed of elastic
q plastics which are non-fusible at temperatures up to 220°C
and which are filled with white inorganic pigments being
applied onto the hot-melt layer and,
d) at least one ink-receiving layer.
2. The ink-jet transfer system according to
c I, characterized in that the molecules of the ink-
receiving layer and/or of the binder contained therein are
capable of forming chemical, particularly covalent bonds to
the dyestuff molecules of the ink.
3. The ink-jet transfer system according to
claim 1 or 2, characterized in that the ink-receiving layer
has available reactive groups which are capable of forming
essentially covalent bonds to the dyestuff molecules, par­
ticularly to azo-dyestuff molecules or acid-dyestuff mole­
cules of the ink.
4. The ink-jet transfer system according to
claim 3, characterized in that the reactive groups are ami­
no groups.
5. The ink-jet transfer system according to one
of the claims 1 to 4, characterized in that the ink­
receiving layer contains or is composed of a highly porous
polyamide pigment with a surface of at least about 15 m2 /g,
preferably of about 20-30 m2 /g and a mean granular size of
approximately about 2 to 25 ~, preferably about 2-10 ~,
as well as a soluble polyamide as binder and that the hot­
melt contains or is composed of a polyester.
Board Assigned Page #20
6. The ink-jet transfer system according to
claim 5, characterized in that the highly porous polyamide
pigment is obtained by means of an anionic poly-addition
and subsequent controlled precipitation whereby the granu­
lar sizes are adjusted by ceasing the precipitation.
7. The ink-jet transfer system according to one
of the claims 1 to 6, characterized in that the ratio be
tween the porous pigment and the binder is between about
5:1 and 1:1, preferably 3:1 and 2:1 and icularly pre­
ferred 2.4:1.
8. The ink-jet transfer system according to one
of the claims 1 to 7, characterized in that the elastic
plastics of the white background layer are selected from
the group comprising polyurethanes, polyacrylates, poly­
alkylenes, particularly preferred polyurethanes.
9. The ink-jet transfer system according to one
of the claims 1 to 8, characterized in that the pigments in
the white background layer are selected from the group com­
prising BaS04' ZnS, , ZnO, SbO.
10. The ink-jet transfer system according to
one of the claims 1 to 9, characterized in that the adhe­
sive layer is a hot-melt layer.
11. The ink-jet transfer system according to
claim 10, characterized in that the hot-melt r contains
or is composed of a mixture a blend of an ethylene acrylic
acid copolymer and polyester particles of a granular size
of less than or equal to 20 ~.
12. The ink-jet transfer system according to
one of the claims 1 to 11, characterized in that the carri­
er layer is composed of a heat-resistant separating paper,
preferably silicone paper.
13. The ink-jet transfer system according to
one of the claims 1 to 12, characterized in that it fur­
thermore contains a dispersing additive for organic pig­
ments.
Board Assigned Page #21
14. Method for the preparation of an ink-jet
transfer system according to one of the cIa I to 13,
comprising the following steps:
a) application of an adhesive layer having dis
persed spherical polyester particles of a granular size of
less than 30 ~ onto a carrier material whereby a layer
thickness of about 30 to 40 ~ is adjusted,
~ b) application of a white background layer com­
~ posed of elastic plastics non-fusible at temperatures up to
10 220°C and filled with white ino pigments onto the
hot-melt layer,
c) appl ion of at least one ink-receiving
layer onto said white background layer so that a total
thickness of the ink-receiving layer of about 20 to 35 ~
is achieved and,
d) letting the solvent evaporate during coat
ing.
15. Method according to claim 14, characterized
in that two ink-receiving layers are applied.
16. Method for nting textile substrates,
characterized in that a graphic presentation is printed
laterally correct by a computer via a printer on the ink­
jet transfer system according to one of the claims 1 to 13
and thereafter is hot iron pressed onto the textile sub­
strate and in that the carrier material is removed cold af­
ter cooling down.
Board Assigned Page #22
Abstract
An ink-jet transfer system is disclosed, as
well as a transfer printed product which is highly wash­
resistant, colour-fast and environment-friendly, and a pro­
cess for producing the same and its use in a printing pro­
cess by means of the disclosed ink-jet transfer system. The
disclosed ink-jet transfer system has a substrate, a hot
melt applied on the substrate and at least one ink­
absorbing layer which comprises a mixture of a highly po­
rous pigment and a binder. The molecules of the pigment and
if required of the binder and hot-melt layer can form chem­
ical bonds with the dyeing molecules of the ink.
Board Assigned Page #23