Ex Parte Aylward et al

Board of Patent Appeals and Interferences

Mar 18, 2010

10827398 (B.P.A.I. Mar. 18, 2010)

UNITED STATES PATENT AND TRADEMARK OFFICE
_________

BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
__________

Ex parte PETER T. AYLWARD,
JAMES S. HONAN, and
NARASIMHARAO DONTULA
__________

Appeal 2009-003107
Application 10/827,398
Technology Center 1700
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Decided: March 18, 2010
___________

Before ADRIENE LEPIANE HANLON, CHUNG K. PAK, and
TERRY J. OWENS, Administrative Patent Judges.

HANLON, Administrative Patent Judge.

DECISION ON APPEAL

A. STATEMENT OF THE CASE
This is an appeal under 35 U.S.C. § 134 from an Examiner’s decision
rejecting claims 1-25. We have jurisdiction under 35 U.S.C. § 6(b). We
AFFIRM.

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Application 10/827,398

Claim 1, reproduced below, is representative of the subject matter on
appeal.
1. A method for placing indicia on the non-image side of a
support for an imaging element comprising providing a support,
wherein said imaging support comprises an image side having
at least one imaging layer and a non-image side; contacting said
non-image side of said support with a thermal transfer dye
donating sheet; applying energy in a pattern to said thermal
transfer dye donating sheet; and transferring said pattern to said
non-image side of said support to form indicia, and applying an
environmental protection laminate layer to said indicia on said
non-image side of said support.

App. Br., Claims Appendix.1
The only Examiner’s rejection before us on appeal is the rejection of
claims 1-25 under 35 U.S.C. § 103(a) as unpatentable over the combination
of Campbell,2 Chang,3 and Jones.4
B. ISSUES
The Appellants argue the patentability of claims 1-25 as a group.
Thus, the sole issue on appeal is:
Have the Appellants identified harmful error in the Examiner’s
conclusion that the steps of using a thermal transfer printing process to form
indicia on the non-image side of a support and applying an environmental
protection layer to that indicia, as recited in claim 1, would have been
obvious to one of ordinary skill in the art in view of the combined teachings
of Campbell, Chang, and Jones?

1 Appeal Brief dated February 14, 2008.
2 US 5,612,283 to Campbell issued March 18, 1997.
3 US 6,476,842 B1 to Chang issued November 5, 2002.
4 US 2003/0038174 A1 to Jones published February 27, 2003.
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C. FINDINGS OF FACT
Campbell discloses a dye-receiving element for thermal dye transfer
comprising a support having, on the front side thereof, a biaxially-oriented
composite film laminated to the support and a dye imaging-receiving layer.
A biaxially-oriented transparent film is also laminated to the back side of the
support. Campbell 2:1-12.
Campbell discloses that the support may be, for example, a polymeric,
a synthetic paper, or a cellulose fiber paper support. Campbell 2:13-16.
Campbell discloses that in a typical extrusion lamination process,
back printing labels, water marks and logos are applied directly to the back
side of the paper support stock with inks applied by a gravure printing
process. Campbell 2:17-20; see also Campbell 5:66-67 (paper stocks were
back printed with a logo).
Chang discloses that thermal transfer printing may be used to produce
indicia on a surface of coated or plain paper. Chang 1:44-49.
Jones discloses that a protective layer may be affixed over at least a
portion of an image-receiving layer carrying indicia. Jones discloses that the
protective layer protects the image-receiving layer from damage and
prevents bleeding of thermal transfer dye. Jones, para. [0024].
D. PRINCIPLES OF LAW
The test for obviousness “is what the combined teachings of the
references would have suggested to those of ordinary skill in the art.” The
test is not that the claimed invention must be expressly suggested in any one
or all of the references. In re Keller, 642 F.2d 413, 425 (CCPA 1981).
Facts relevant to a determination of obviousness include (1) the scope
and content of the prior art, (2) any differences between the claimed
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invention and the prior art, (3) the level of skill in the art, and (4) any
relevant objective evidence of obviousness or non-obviousness. KSR Int’l
Co. v. Teleflex Inc., 550 U.S. 398, 406 (2007); Graham v. John Deere Co.,
383 U.S. 1, 17-18 (1966).
In order for a showing of “unexpected results” to be probative
evidence of non-obviousness, it falls upon the Appellant to at least establish:
(1) that there actually is a difference between the results obtained through
the claimed invention and those of the prior art; and (2) that the difference
actually obtained would not have been expected by one skilled in the art at
the time of invention. In re Freeman, 474 F.2d 1318, 1324 (CCPA 1973).
Furthermore, “objective evidence of nonobviousness must be
commensurate in scope with the claims.” In re Lindner, 457 F.2d 506, 508
(CCPA 1972).
E. ANALYSIS
The Examiner found that Campbell does not print indicia on the non-
image side of a support using a thermal transfer printing process and does
not apply a protection layer to the printed indicia. Nonetheless, the
Examiner found that Chang establishes that thermal transfer printing was
known to be used to print indicia on a substrate, such as coated or plain
paper. The Examiner also found that Jones establishes that it was known to
provide a protective layer over indicia to protect the indicia and prevent it
from bleeding. Ans. 3-4.5
Based on these teachings in Chang and Jones, the Examiner
concluded that it would have been obvious to one of ordinary skill in the art
to use a thermal transfer printing process to form indicia on the non-image

5 Examiner’s Answer dated March 25, 2008.
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side of the support in Campbell and protect the indicia with a protective
layer as disclosed in Jones. Ans. 4.
According to the Appellants, Campbell teaches laminating a clear film
to a back side of an imaging element when back side printing is present.
Reply Br. 3-4.6 However, the Appellants argue that none of the references
teaches or suggests “the application of an environmental protective layer
limited to the area covered by the indicia.” App. Br. 5 (emphasis added).
The Appellants’ argument is not persuasive of reversible error.
Although Claim 1 recites that the environmental protection layer is applied
“to” the indicia, the claim is broad enough to include an application step
whereby the environmental protection layer is applied to the indicia as well
as to areas that are not covered by the indicia.
Jones discloses that a protective layer may be affixed over at least a
portion of an image-receiving layer carrying indicia. Jones, para. [0024].
Thus, we find that Jones discloses “applying an environmental protection
laminate layer to said indicia” as recited in claim 1.
The Appellants argue that Jones applies the environmental protection
layer over an image receiving layer in contrast to the claimed method which
does not employ a “special image receiving layer” on the non-image side of
the support. App. Br. 5.
The Appellants’ argument fails to consider the prior art as a whole.
The Examiner merely relied on Jones to establish that, at the time of the
Appellants’ invention, protective layers were known to be used to protect
indicia. The Examiner determined that it would have been within the skill of
the ordinary artisan to use the protection layer disclosed in Jones to protect

6 Reply Brief dated May 21, 2008.
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indicia printed on other surfaces, such as the non-image side of the support
in Campbell. See Ans. 4. On this record, the Appellants have failed to
direct us to any evidence to the contrary.
The Appellants also argue that “[t]he references, alone and in
combination, provide no reasonable expectation of success of printing on the
backside of an imaging element, which backside does not bear a special
image receiving layer.” App. Br. 5.
We disagree. Chang discloses that a thermal transfer printing process
may be used to produce indicia on a surface of coated or plain paper. Chang
1:44-49. Chang does not disclose that the coated or plain paper has a
“special image receiving layer” as alleged by the Appellants. Rather, Chang
discloses that the paper has a “dye receptive surface.” Chang 1:65-2:3. The
Appellants have failed to direct us to any evidence establishing that the “dye
receptive surface” in Chang is a “special image receiving layer.” Thus, on
this record, Chang provides a reasonable expectation of success in using the
disclosed thermal transfer printing process to form indicia on the non-image
side of the paper support in Campbell which admittedly does not have a dye
image-receiving layer.7 See App. Br. 4.
Finally, the Appellants argue that Table 1 on page 63 of the
Specification illustrates a “surprising result.” App. Br. 5-6.
Table 1 reports data for three Samples, i.e., Samples 1, 2, and 3.
According to the Appellants’ Specification, Sample 1 is the control, Sample
2 includes an environmental protection layer over print, and Sample 3 is the

7 The Appellants recognize that the non-image side of the support recited in
claim 1 is not limited to a particular material. See Reply Br. 4 (“the back
side of the imaging element can be any material, for example, paper or silver
halide-containing materials”).
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same as Sample 2 but does not include an environmental protection layer
over print. See Spec. 63, Table 1.
In the case of Sample 2, no loss in the dye density of the protected
print is said to have been observed when the imaging element was exposed
to either high or low pH conditions. However, in the case of Sample 3,
some dye density loss of the unprotected print is said to have been observed
when the imaging element was exposed to different pH conditions. Spec.
64.
Significantly, the Appellants have failed to explain why the results
reported in Table 1 would not have been expected by one of ordinary skill in
the art. Freeman, 474 F.2d at 1324. That is, the Appellants have failed to
explain why the protected print in Sample 2 would not have been expected
to maintain its dye density.
Moreover, to the extent that the environmental protection layer in the
Appellants’ Example was only applied to the area of the support covered by
the indicia, the evidence is not commensurate in scope with claim 1.
Lindner, 457 F.2d at 508. As discussed above, claim 1 does not limit the
application of the environmental protection layer to only those areas of the
support covered by the indicia. Thus, for at least these reasons, the
Appellants’ evidence is not probative of non-obviousness.
In sum, the Appellants have not identified harmful error in the
Examiner’s conclusion that the steps of using a thermal transfer printing
process to form indicia on the non-image side of a support and applying an
environmental protection layer to that indicia, as recited in claim 1, would
have been obvious to one of ordinary skill in the art in view of the combined
teachings of Campbell, Chang, and Jones.
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E. DECISION
The decision of the Examiner is affirmed.
No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. § 1.136(a).

AFFIRMED

tc

Paul A. Leipold, Patent Legal Staff,
Eastman Kodak Company
343 State Street
Rochester, NY 14650-2201

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