Ex parte HEE K. YOON, et al.

Board of Patent Appeals and Interferences

Aug 27, 1997

07836032 (B.P.A.I. Aug. 27, 1997)

Application for patent filed February 14, 1992.1
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was not written for publication in a law journal and (2) is not
binding precedent of the Board.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. 22
UNITED STATES PATENT AND TRADEMARK OFFICE
_____________
BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
_____________
Ex parte HEE K. YOON
and EDWARD L. CHO

_____________
Appeal No. 96-1100
Application 07/836,0321
______________
ON BRIEF
_______________
Before MEISTER, ABRAMS and McQUADE, Administrative Patent Judges.
ABRAMS, Administrative Patent Judge.
DECISION ON APPEAL
This is an appeal from the decision of the examiner finally
rejecting claims 1 through 8, which constitute all of the claims
of record in the application.
Appeal No. 96-1100
Application 07/836,032
A rejection based upon Papp in view of Freeman and Baron2
was not repeated in the Answer, and therefore is considered to
have been withdrawn.
2
The appellants' invention is directed to an orthopaedic
bandage having printing material on its surface. The subject
matter before us on appeal is illustrated by reference to claim
1, which reads as follows:
1. An orthopaedic bandage comprising:
a. a fibrous substrate having a surface at least
50% of the fibers on said surface having a
Young’s Modulus greater than 8 x 10 pounds per6
square inch;
b. printing material on said surface comprised of
a plastisol and pigment; and
c. a curable resin coating on said substrate and
said printing material.
THE REFERENCES
The references relied upon by the examiner to support the
final rejection are:
Baron et al. (Baron) 4,627,424 Dec. 9, 1986
Papp, Jr. (Papp) 4,935,019 June 19, 1990
Freeman et al. (Freeman) 5,088,484 Feb. 18, 1992
Scholz et al. (Scholz) 5,342,291 Aug. 30, 1994
THE REJECTIONS
Claims 1 through 8 stand rejected under 35 U.S.C. § 103 as
being unpatentable over Freeman in view of Papp and Baron.2
Appeal No. 96-1100
Application 07/836,032
3
Claims 1, 4 and 5 stand rejected under 35 U.S.C. § 103 as
being unpatentable over Scholz in view of Baron.
The rejections are explained in the Examiner's Answer and
Supplemental Answers.
The opposing viewpoints of the appellants are set forth in
the Brief and the Reply Brief.
OPINION
Independent claim 1 requires, inter alia, that the printing
material be comprised of a plastisol and a pigment, with a
plastisol having been defined by the appellants as a mixture of
resin and plasticizer (Paper No. 16). In the first of the two
rejections, the examiner looks for this teaching to Papp, which
is directed to the fabrication of a colored X-ray detectable
surgical sponge. The examiner's position is that the claimed
subject matter would have been obvious by modifying Freeman, the
primary reference, in view of this showing of Papp. However, we
agree with the appellants that Papp would not have suggested the
required plastisol and pigment printing material to one of
ordinary skill in the art because all of Papp's printing
materials contain a radiopaque substance, which would be counter-
productive if used in Freeman's orthopaedic bandage. We
Appeal No. 96-1100
Application 07/836,032
4
specifically reject the examiner's argument that it would have
been obvious to discard the radiopaque element in the printing
materials, for the only suggestion for this is found via
impermissible hindsight.
Insofar as the second rejection of claim 1 is concerned, we
find ourselves in agreement with the appellants' position that
while Scholz teaches using a plasticizer in printing material for
an orthopaedic bandage, it does not teach using a plastisol,
which is not the same thing.
Among the limitations in independent claim 6 is that the
printing material be comprised of a water-based acrylic and a
pigment. Here, the examiner again points to Papp, which
discloses an acrylic latex emulsion as an ingredient in another
example of a radiopaque printing material. As was the case
above, we share the appellants' view that there is no suggestion,
other than hindsight, which would have motivated an artisan to
separate the acrylic latex and the pigment from the remaining
ingredients and utilize them as printing material on the Freeman
orthopaedic bandage.
The examiner bears the initial burden of presenting a prima
facie case of obviousness (see In re Rijckaert, 9 F.3d 1531,
1532, 28 USPQ2d 1955, 1956 (Fed. Cir. 1993)), which is
Appeal No. 96-1100
Application 07/836,032
5
established when the teachings of the prior art itself would
appear to have suggested the claimed subject matter to one of
ordinary
skill in the art (see In re Bell, 991 F.2d 781, 783, 26 USPQ2d
1529, 1531 (Fed. Cir. 1993)). Neither of the rejections meet
this test and therefore they cannot be sustained (see In re Fine,
837 F.2d 1071, 1074, 5 USPQ2d 1596, 1598 (Fed. Cir. 1988)).
The decision of the examiner is reversed.
REVERSED
)
JAMES M. MEISTER )
Administrative Patent Judge )
)
)
) BOARD OF PATENT
NEAL E. ABRAMS )
Administrative Patent Judge ) APPEALS AND
)
) INTERFERENCES
)
JOHN P. McQUADE )
Administrative Patent Judge )
Appeal No. 96-1100
Application 07/836,032
6
Robert L. Minier
One Johnson & Johnson Plaza
New Brunswick, NJ 08933-7003