Ex parte Bardeen

Board of Patent Appeals and Interferences

Nov 18, 1999

08182409 (B.P.A.I. Nov. 18, 1999)

Application for patent filed January 14, 1994. 1
THIS OPINION WAS NOT WRITTEN FOR PUBLICATION
The opinion in support of the decision being entered
today (1) was not written for publication in a law
journal and (2) is not binding precedent of the
Board.
Paper No. 20
UNITED STATES PATENT AND TRADEMARK OFFICE
____________
BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
____________
Ex parte KEA BARDEEN
____________
Appeal No. 1996-1291
Application No. 08/182,4091
____________
HEARD: November 4, 1999
____________
Before JOHN D. SMITH, PAK and SPIEGEL, Administrative Patent
Judges.
PAK, Administrative Patent Judge.
DECISION ON APPEAL
This is a decision on an appeal from the examiner’s final
rejection of claims 1, 3, 4, 6-13, 15, 17, 20, 21 and 32.
Claims 16 and 22 through 31 stand withdrawn from consideration
by the examiner as drawn to a non-elected invention.
Appeal No. 1996-1291
Application No. 08/182,409
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The subject matter on appeal is directed to a surface
decorating technique that is especially suitable for children.
See specification, page 3, line 25 to page 4, line 6. Claims
1, 17 and 32 are illustrative and read as follows:
1. A method of decorating a surface of an item that has
an area adapted to display a design, comprising the steps of:
(a) spreading a quantity of a viscous surface
preparatory composition onto the area so as to cover the area
with a viscous preparatory layer wherein said surface
preparatory composition has an initial first state that allows
it to be spread onto the surface of the item as the viscous
preparatory layer and wherein said surface preparatory
composition is curable to a final state that forms a stable
layer adhered to the surface;
(b) providing a pattern sheet with the pattern formed
thereon in a medium that will transfer onto said surface
preparatory composition when in the initial state;
(c) contacting said preparatory layer with said pattern
sheet and the pattern sheet thereon for a sufficient time to
allow said medium to transfer onto said preparatory layer
where a transferred pattern transfers onto said preparatory
layer;
(d) removing said pattern sheet from contact with said
viscous preparatory layer after the transferred pattern has
been transferred thereon yet before said preparatory layer has
cured into the final state; and
(e) curing said preparatory layer into the final state
thereby fixing the transferred pattern.

17. A method of decorating a surface of an item of
produce that has an area sufficient size to display a design,
comprising the steps of:
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(a) providing a pattern sheet with the pattern pre-
printed
thereon in a water soluble medium;
(b) covering the area with a water-based surface
preparatory composition that has an initial first state that
allows it to be spread onto the surface of the item as a
viscous preparatory layer yet which cures into a final state
to form a stably layer adhered to the surface, said selected
medium being selected as one that will transfer onto said
surface preparatory composition when int he [sic, in the]
initial state;
(c) contacting said preparatory layer with said pattern
sheet for a sufficient time to allow said medium to transfer
onto said preparatory layer whereby a transferred pattern
transfers onto said preparatory layer and thereafter removing
said pattern sheet within a time insufficient to allow said
pattern sheet to become affixed to said item of produce; and

(d) allowing said preparatory layer to cure into said
final state thereby fixing the transferred pattern on said
stable layer.
32. A method of decorating a surface of an item that has
an area adapted to display a design, comprising the steps of:
(a) covering the area with a surface preparatory
composition that has an initial first state that is
sufficiently viscous to allow it to spread onto the surface
of the item as a preparatory layer, said surface
preparatory composition being selected from a group consisting
of: water-based non-animal glues, water-based animal glues,
water-based pastes and egg white;
(b) providing a pattern sheet with the pattern formed
thereon in a medium that will transfer onto said surface
preparatory composition when in the initial state; and
(c) contacting said preparatory layer with said pattern
sheet and the pattern thereon for a sufficient time to allow
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said medium to transfer onto said preparatory layer where a
transferred pattern transfers onto said preparatory layer.
As evidence of obviousness, the examiner relies on the
following prior art:
Golchert 4,024,287 May 17,
1977
Kitabatake 4,169,169 Sep. 25,
1979
Takiyama et al. (Takiyama) 4,490,410 Dec. 25,
1984
Claims 1, 3, 4, 6 through 8, 11 through 13, 17, 20, 21
and 32 stand rejected under 35 U.S.C. § 103 as unpatentable
over the combined disclosures of Kitabatake and Takiyama.
Claims 9, 10, 15 and 21 stand rejected under 35 U.S.C. § 103
as unpatentable over the combined disclosures of Kitabatake,
Takiyama and Golchert.
We have carefully reviewed the specification, claims and
applied prior art, including all of the arguments advanced by
both the examiner and appellant in support of their respective
positions. This review leads us to conclude that the
examiner’s § 103 rejections are not well founded.
Accordingly, we will not sustain any of the foregoing § 103
rejections for essentially those reasons set forth in the
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Brief. We add the following primarily for emphasis and
completeness.
The claimed subject matter is directed to a decorating
technique especially usable by children in the decoration of
pumpkins for Halloween. See, e.g., specification, page 4,
lines 1-6. The decorating technique comprises spreading a
viscous composition on a surface area of an item, such as a
pumpkin, transferring a medium containing a design on a
pattern sheet to the viscous composition “in the initial
state,” removing the pattern sheet from contact with the
viscous composition before the composition is cured, and
curing the viscous composition to fix the transferred design.
See claims 1 and 17. The viscous composition is selected from
the group consisting of water-based non-animal glues, water-
based animal glues, water-based pastes and egg white. See
claim 32.
The examiner takes the position that “[i]t would have
been obvious at the time the invention was made to have
utilized Takiyama et al.’s resin transferring layer in
Kitabatake’s transfer process”(see Answer, page 5) and “to
have utilized Golchert’s method or producing printing transfer
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patterns for Kitabatake’s ‘pre-printed’ transfer pattern” (see
Answer, page 6). To establish obviousness within the meaning
of 35 U.S.C.
§ 103, the teachings of the prior art taken as a whole must
provide motivation or suggestion to arrive at the claimed
subject matter. See Uniroyal, Inc. v. Rudkin-Wiley Corp., 837
F.2d 1044, 1051, 5 USPQ2d 1434, 1438 (Fed. Cir. 1988);
Interconnect Planning Corp. v. Feil, 774 F.2d 1132, 1143, 227
USPQ 543, 550-51 (Fed. Cir. 1985). However, for the reasons
well articulated by appellant at pages 5 through 10 of the
Brief, we can think of no reason, absent appellant’s own
disclosure, why one of ordinary skill in this art would have
been motivated to combine the diverse teachings of Kitabatake,
Takiyama and Golchert as the examiner has proposed. Although
we find that the transfer method of the type described in
Kitabatake is useful for “almost all objects including human
skin, clothes, building materials and the like,” see column 1,
lines 65 to column 2, line 3, the types of chemicals used in
Kitabatake’s transfer method are materially different from
those chemicals described in Takiyama, compare Kitabatake,
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columns 2 through 4, with Takiyama, columns 2 through 4.
Nowhere does either Kitabatake and/or Takiyama indicate that
the chemicals of the type described in Takiyama are useful for
the transfer method described in Kitabatake. See Takiyama and
Kitabatake in their entirety. Nor does Golchert remedy this
deficiency. See Golchert in its entirety. To employ the
chemicals described in Takiyama in the transfer method of
Kitabatake is to destroy the invention on which Kitabatake is
based, for the use of such chemicals materially compromises
the objectives of Kitabatake. See Ex parte Hartmann, 186 USPQ
366, 367 (Bd. App. 1974). Accordingly, we cannot sustain any
of the examiner’s § 103 rejections.
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No time period for taking any subsequent action in
connection with this appeal may be extended under 37 CFR
§ 1.136(a).
REVERSED
JOHN D. SMITH )
Administrative Patent Judge )
)
)
)
) BOARD OF PATENT
CHUNG K. PAK ) APPEALS
Administrative Patent Judge ) AND
) INTERFERENCES
)
)
)
CAROL A. SPIEGEL )
Administrative Patent Judge )
jrg
Appeal No. 1996-1291
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Timothy J. Martin
Suite 200
9250 W. Fifth Avenue
Lakewood, CO 80226
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