Ex parte BRAULT et al.

Board of Patent Appeals and Interferences

Aug 1, 1997

08115561 (B.P.A.I. Aug. 1, 1997)

Application for patent filed September 3, 1993.1
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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journal and (2) is not binding precedent of the Board.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. 22
UNITED STATES PATENT AND TRADEMARK OFFICE
________________
BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
________________
Ex parte DONALD A. BRAULT, DOUGLAS A. CAHILL,
RICHARD S. HIMMELWRIGHT and DENE H. TAYLOR
________________
Appeal No. 97-0222
Application 08/115,5611
________________
ON BRIEF
________________
Before KIMLIN, WEIFFENBACH and ELLIS, Administrative Patent
Judges.
KIMLIN, Administrative Patent Judge.
DECISION ON APPEAL
This is an appeal from the final rejection of claims 1-37,
42, 43 and 44, all the claims remaining in the present
application. Claim 1 is illustrative:
1. A process for preparing a protected ink image comprising
A) imagewise depositing one or more ink images on an ink
receptor, the ink receptor comprising
Appeal No. 97-0222
Application 08/115,561
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1) a temporary carrier layer;
2) an image transparent, protective layer; and
3) an image transparent, adhesive, ink receptive layer
permanently adhered to the protective layer;
wherein, the one or more ink images are deposited on the image
transparent, adhesive, ink receptive layer to form an ink imaged
layer of an imaged receptor;
B) applying to the ink imaged layer of the imaged receptor,
a substrate; wherein, the adhesive of the image transparent,
adhesive, ink receptive layer is activated whereby the substrate
is adhered to the ink imaged layer of the imaged receptor to form
an imaged laminate; and
C) removing the temporary carrier layer from the image
transparent, protective layer of the imaged laminate.
The examiner relies upon the following references as
evidence of obviousness:
Hunt 4,171,398 Oct. 16, 1979
Parker et al. (Parker) 4,927,709 May 22, 1990
Yamane et al. (Yamane) 5,217,793 June 8, 1993
Appellants’ claimed invention is directed to a process for
preparing a protected image produced by an ink jet wherein the
ink comprises a carrier liquid which is either water, a
Appeal No. 97-0222
Application 08/115,561
The Examiner’s Answer misstates the double patenting2
rejection at page 6 of the Answer as applicable to only claims
1-37. However, since the examiner’s Advisory Action of
January 18, 1996 states that all the appealed claims stand
rejected, and appellants have not contested the double patenting
rejection but have offered to file a terminal disclaimer, we
will, for purposes of this appeal, consider all the appealed
claims to stand rejected under obviousness-type double patenting.
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polyhydric alcohol or a combination thereof. The process entails
depositing an image from an ink jet on an adhesive, ink receptive
layer that is permanently adhered to a transparent, protective
layer which, in turn, is positioned on a temporary carrier layer.
The ink imaged layer is then applied to a substrate which bonds
to the adhesive layer. The temporary carrier layer is then
removed leaving a protected ink image on the substrate.
Appealed claims 1-29, 32-35 and 42-44 stand rejected under
35 U.S.C. § 103 as being unpatentable over Hunt in view of the
admitted prior art. Claims 30 and 31 stand rejected under
35 U.S.C. § 103 as being unpatentable over Hunt in view of
Parker, and claims 36 and 37 stand rejected under 35 U.S.C. § 103
as being unpatentable over Hunt in view of Yamane. In addition,
the appealed claims stand provisionally rejected under the
judicially created doctrine of obviousness-type double patenting
over claims 1-32 of copending application, U.S. Serial No.
08/115,564 in view of Hunt.2
Appeal No. 97-0222
Application 08/115,561
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We consider first the examiner’s rejection of the appealed
claims under the judicially created doctrine of obviousness-type
double patenting over claims 1-32 of copending application, U.S.
Serial No. 08/115,564, in view of Hunt. Appellants submit at
page 14 of the principal Brief that they will not address the
merits of this rejection at this time, but will file a terminal
disclaimer if one becomes necessary. Consequently, perforce, we
will sustain the examiner’s rejection.
We now turn to the rejection of the appealed claims under
35 U.S.C. § 103 over Hunt in view of the admitted prior art
(claims 1-29, 32-35 and 42-44), in view of Parker (claims 30 and
31), and in view of Yamane (claims 36 and 37). To the extent the
prior art applied by the examiner establishes a prima facie case
of obviousness for the claimed subject matter, appellants have
proffered a declaration by Everett W. Bennett, a Ph.D. in Organic
Chemistry, as evidence of nonobviousness, i.e., unexpected
results. Therefore, we must, as a matter of law, begin anew and
weigh the evidence of obviousness against the evidence of
nonobviousness. In re Piasecki, 745 F.2d 1468, 1472, 223 USPQ
785, 788 (Fed. Cir. 1984); In re Rinehart, 531 F.2d 1048, 1052,
189 USPQ 143, 147 (CCPA 1976). However, when we look to the
Examiner’s Answer for the examiner’s treatment of the declaration
evidence, we find that the examiner committed reversible error.
Appeal No. 97-0222
Application 08/115,561
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According to the examiner, “[a]n opinion as to a legal conclusion
(such as unexpected results) is not entitled to any weight. In
re Chilowski, 306 F.2d 908, 134 USPQ 515 (CCPA 1962)” (page 8 of
Answer, emphasis added). The examiner’s reliance on Chilowski is
not well founded. The court in Chilowski ruled that the issue of
sufficiency of disclosure under § 112, first paragraph, is a
legal one that is outside the field of expertise of appellant’s
experts. Therefore, the court ruled that the experts’ opinions
regarding the sufficiency of disclosure were of no probative
value. In the present case, the fatal flaw in the examiner’s
rationale is that the issue of unexpected results is not a legal
issue that is outside the field of expertise of the declarant,
Dr. Bennett. It is fundamental that the purpose of a Rule 132
Declaration is to provide an avenue for the applicant to offer a
fact-based opinion that is relevant to unexpected results
emanating from the claimed invention. If the declarant simply
gives an opinion that the results are unexpected without
providing a factual basis for the opinion, then the examiner’s
second criticism of the Declaration would have merit, viz., “no
logical basis for anyone’s conclusion as to unexpected results
has been offered” (page 8 of Answer). The examiner’s criticism
notwithstanding, the Declaration, at pages 3 and 4, provides
factual support for the declarant’s opinion why it is unexpected
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Application 08/115,561
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in view of the Hunt disclosure to successfully realize the
claimed invention of employing an aqueous ink, printed with an
ink jet, onto an adhesive surface. Inasmuch as the examiner has
not presented countervailing evidence in the form of prior art or
scientific reasoning relevant to why one of ordinary skill in the
art would have expected an aqueous ink image produced by an ink
jet to be effectively printed on an adhesive surface, we must
conclude that the evidence of nonobviousness proffered by
appellants outweighs the evidence of obviousness presented by the
examiner. Consequently, the examiner’s § 103 rejections of the
appealed claims are reversed.
In conclusion, based on the foregoing, the examiner’s double
patenting rejection of the appealed claims is affirmed. The
examiner’s rejections under 35 U.S.C. § 103 are reversed. The
examiner’s decision rejecting the appealed claims is affirmed.
No time period for taking any subsequent action in connec-
tion with this appeal may be extended under 37 CFR § 1.136(a).
AFFIRMED
EDWARD C. KIMLIN )
Administrative Patent Judge )
)
)
)
CAMERON WEIFFENBACH ) BOARD OF PATENT
Administrative Patent Judge ) APPEALS AND
Appeal No. 97-0222
Application 08/115,561
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) INTERFERENCES
)
)
JOAN ELLIS )
Administrative Patent Judge )
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Application 08/115,561
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Ratner & Prestia
P.O. Box 7228
Wilmington, DE 19803