Ex parte Cherian

Board of Patent Appeals and Interferences

Jul 31, 2000

08095788 (B.P.A.I. Jul. 31, 2000)

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journal and (2) is not binding precedent of the Board.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. 21
UNITED STATES PATENT AND TRADEMARK OFFICE
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BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
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Ex parte ABRAHAM CHERIAN
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Appeal No. 1997-4195
Application No. 08/095,788
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ON BRIEF
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Before KIMLIN, WARREN, and LIEBERMAN, Administrative Patent Judges.
LIEBERMAN, Administrative Patent Judge.
DECISION ON APPEAL
This is an appeal under 35 U.S.C. § 134 from the examiner’s refusal to allow claims 4 through 10,
13 and 14 which are all the claims remaining in the application.
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Application No. 08/095,788
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THE INVENTION
The invention is directed to a simulated photo print making kit comprising four elements: a
transparent substrate for a wrong reading image, which has a glass transition temperature substantially
above that of toner particles; a smooth surfaced rigid member; an abhesive member; and a backing
member with a light reflecting backing over the wrong reading image.
THE CLAIMS
Claims 14 is illustrative of appellants’ invention and is reproduced below.
14. A simulated, photographic print making kit having components capable of being attached
together using a heat and pressure member for forming a simulated photographic print, said kit
comprising:
a transparent substrate member for having a wrong reading image xerographically formed
thereon, said member having a glass transition temperature substantially above that of toner particles
used to form said image;
a smooth surfaced rigid member for supporting said transparent substrate member in a flat
position during creation of a simulated photographic print;
an abhesive member for use as a barrier between a backing member and a heat and pressure
member during attachment of said transparent substrate and said backing member;
and
Appeal No. 1997-4195
Application No. 08/095,788
Claim 1 as it appears in the Appendix to the Brief fails to contain the amendment thereto submitted in the amendment filed May 31, 1996, (Paper No. 16). We observe that claim 4 contains substantially identical language to that entered in the amendment of May 31, 1996, and thus claims 1 and 4 are substantial
1
duplicates. See Manual of Patent Examining Procedure §706.03 (k) (7th ed., Rev. 1, Feb. 2000; 700-34-700-35).
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a backing member for attachment to said transparent substrate member to provide a light
reflecting backing over said wrong reading image said backing member containing a coating of adhesive
material for adhering said backing member to said transparent substrate member.1
THE REFERENCES OF RECORD
As evidence of the prior art of record, the examiner relies upon the following references.
Malhotra 4,997,697 Mar 05, 1991
Whalen 5,197,763 Mar 30, 1993
THE REJECTION
Claims 4 through 10, 13 and 14 stand rejected under 35 U.S.C. § 103 as being unpatentable
over Whalen in view of Malhotra.
OPINION
We have carefully considered all of the arguments advanced by appellant and the examiner and
agree with the appellant that the aforementioned rejection under 35 U.S.C. § 103 is not well founded.
Accordingly, we will not sustain this rejection.
“[T]he examiner bears the initial burden, on review of the prior art or on any other ground, of
presenting a prima facie case of unpatentability, ” whether on the grounds of anticipation or
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Application No. 08/095,788
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obviousness. See In re Oetiker, 977 F.2d 1443, 1445, 24 USPQ2d 1443, 1444 (Fed. Cir. 1992).
In the case before us, the examiner relies upon a combination of two references to reject the claimed
subject matter and establish a prima facie case of obviousness. The basic premise of the rejection is
that it would have been obvious to one of ordinary skill in the art to have substituted the indicia bearing
sheet of Whalen for the transparent sheet of Malhotra. See Answer, page 7. We disagree.
We find that Whalen discloses an emergency medical data card, wherein a letter size blank paper
form is completed and reduced twice by xerography to slightly smaller than credit card size. See
Abstract and column 1, lines 38-57. Subsequently, the sheet is attached to a rigid plastic card. Id.
The card may thereafter be surrounded by a laminate plastic. See Figures 2 and 4, and column 2, lines
8-22. In addition, the reduced paper may be mounted on the rigid plastic by use of an adhesive. See
column 3, lines 1-2.
Notwithstanding our findings, there is no disclosure in Whalen for the utilization of a transparent
sheet in place of paper. Neither is a backing member disclosed which provides a light reflecting
backing, particularly over a wrong reading image (a mirror image). Nor has the examiner addressed
the limitation of the claimed subject matter directed to the transparent substrate member having a glass
transition temperature, T , substantially above that of toner particles.g
In order to remedy these deficiencies, Malhotra is combined with Whalen. Although Malhotra is
directed to a transparent substrate for receiving or containing a xerographic image, Abstract and
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column 1, lines 5-41, there is no suggestion for the addition of backings, or rigid members as required
by the claimed subject matter. Neither is there any rationale presented why a transparent substrate
would be substituted for a paper substrate. Moreover, even if the substitution was made, we still would
not obtain the invention of the claimed subject matter, as a light reflecting backing over a wrong reading
image would be missing.
Based upon the above considerations, even if the examiner was correct in combining the Whalen
and Malhotra in the manner supra, the structure created would, in any event, fall short of the invention
defined by the claimed subject matter, as the aforesaid claimed subject matter requires features that
cannot be achieved by combining Whalen and Malhotra. See Uniroyal Inc. v Rudkin-WileyCorp.,
837 F.2d 1044, 1051, 5 USPQ2d 1434, 1439 (Fed. Cir.), cert denied, 488 U.S. 825 (1988).
Moreover, the examiner must show reasons that the skilled artisan, confronted with the same
problems as the inventor and with no knowledge of the claimed invention, would have selected the
elements from the cited prior art references for combination in the manner claimed. We determine on
the record before us that there is no reason, suggestion, or motivation to combine the references in the
manner proposed by the examiner. Accordingly, the examiner has not established a prima facie case
of obviousness. See In re Rouffet, 149 F.d 1350, 1357, 47 USPQ2d 1453, 1458 (Fed. Cir. 1998).
The rejection of the examiner is not sustained.
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DECISION
The rejection of claims 4 through 10, 13 and 14 under 35 U.S.C. § 103 as being unpatentable over
Whalen in view of Malhotra is reversed.
The decision of the examiner is reversed.
REVERSED
EDWARD C. KIMLIN )
Administrative Patent Judge )
Appeal No. 1997-4195
Application No. 08/095,788
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) BOARD OF PATENT
CHARLES F. WARREN ) APPEALS
Administrative Patent Judge ) AND
) INTERFERENCES
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PAUL LIEBERMAN )
Administrative Patent Judge )
lp
RONALD ZIBELLI
XEROX CORPORATION
XEROX SQUARE 020
ROCHESTER, NY 14644
Leticia
Appeal No. 1997-4195
Application No. 08/095,788
APJ LIEBERMAN
APJ WARREN
APJ KIMLIN
DECISION: REVERSED
Send Reference(s): Yes No
or Translation (s)
Panel Change: Yes No
Index Sheet-2901 Rejection(s):
Prepared: April 25, 2001
Draft Final
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PALM / ACTS 2 / BOOK
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