Ex Parte Ibarra et al

Board of Patent Appeals and Interferences

Jan 8, 2010

11071015 (B.P.A.I. Jan. 8, 2010)

UNITED STATES PATENT AND TRADEMARK OFFICE
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BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
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Ex parte JIM IBARRA,
RICK WALLACE, BARRY L. MARGINEAN,
JOEL D. NERI, PAMELA A. GEDDES, BARRY J. BRIGGS,
and DANIEL J. HARRISON
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Appeal 2009-002512
Application 11/071,015
Technology Center 1700
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Decided: January 08, 2010
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Before TERRY J. OWENS, LINDA M. GAUDETTE, and
MARK NAGUMO, Administrative Patent Judges.

NAGUMO, Administrative Patent Judge.
DECISION ON APPEAL

Appeal 2009-002512
Application 11/071,015

A. Introduction1
Jim Ibarra, Rick Wallace, Barry L. Marginean, Joel D. Neri,
Pamela A. Geddes, Barry J. Briggs, and Daniel J. Harrison (“Ibarra”) timely
appeal under 35 U.S.C. § 134(a) from the final rejection2 of claims 5, 7, 8,
and 12.3 We have jurisdiction under 35 U.S.C. § 6. We AFFIRM.
The subject matter on appeal relates to a system for transferring
digital decal images from a paper support to a ceramic substrate and
thermally fixing the transferred images. Prior art wet and dry decal printing
processes are said to be difficult to adapt to digital decal printing processes
due to problems including excessively high transfer temperatures that result
in surface imperfections (bubbles, cracks, voids, etc.), low color density, and
poor durability. (Spec. 1-3.) The claimed invention involves, inter alia, a
thermal transfer ribbon having a support and a ceramic ink layer present in a
coating comprising a solid carbonaceous binder, and at least one of a film-
forming glass frit, an opacifying agent, and a colorant. (Spec. 3, ll. 11-25.)
Claim 5, reproduced on the following page, is representative.

1 Application 11/071,015, Thermal Transfer Assembly for Ceramic
Imaging, filed 3 March 2005, as a continuation of application 10/621,976,
filed 17 July 2003, which is now U.S. Patent 6,990,904. The benefit of a
series of four successive continuations-in-part is claimed back
to 31 October 2000. The specification is referred to as
the “015 Specification,” and is cited as “Spec.” The real party in interest is
listed as International Imaging Materials, Inc. (Corrected Appeal Brief,
filed 11 April 2008 (“Br.”), 3.)
2 Office action mailed 14 September 2007 (“Final Rejection”; cited as
“FR”).
3 Claims 2, 4, 14, 16, and 24 have been withdrawn from consideration
(FR 1, ¶ 4a) and are not before us.
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Application 11/071,015

5. A system for forming a digitally printed image in a glass substrate, said
system comprising:
(a) a glass substrate and a glass substrate conveyor;
(b) a glass substrate washer for washing said glass substrate, thus
producing a washed glass substrate;
(c) an image transfer medium comprising
a flexible support consisting essentially of paper,
a transferable polymeric cover-coating releasably bound to
said flexible support, and
a digitally printed image formed on said polymeric cover-
coating,
wherein said image transfer medium is further comprised of
opacification particles with a refractive index of at least 2.0
and
a release layer operatively configured to promote
separation and removal of said flexible support from said
imaged polymeric cover-coating,
and wherein:
1. said polymeric cover-coating can be separated from said
flexible support with a peel force of less than
about 30 grams per centimeter at a temperature
of 20 degrees Celsius,
2. said release layer is contiguous with said flexible
support,
3. said release layer has a surface energy of less than
about 40 dynes per centimeter and a Sheffield smoothness
of from about 1 to about 50 Sheffield units, and
4. said release layer is comprised of a thermoplastic
polymer that softens at a temperature of from about 60 to
about 150 degrees Centigrade;
(d) a heat treater for removing said polymeric cover-coating and
for fusing said digitally printed image to the surface of said glass
substrate thus producing a fused digitally printed image and glass
substrate; and
(e) a quencher for cooling said fused digitally printed image and
glass substrate.
(Claims App., Br. 27-28; indentation, paragraphing, and emphasis added.)
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Application 11/071,015

The Examiner has maintained the following ground of rejection:4
Claims 5, 7, 8, and 12 stand rejected under 35 U.S.C. § 103(a) in
view of the combined teachings of Pearson,5 Parker,6 Newton,7
and Seymour.8
Ibarra contends, inter alia, that the Examiner erred in concluding that
it would have been obvious to substitute the polyethylene non-wax release
layer 5 that separates paper substrate 10 from lacquer transfer coating 20,
which bears ink design 30 taught by Parker for the release agent 305 in the
decal carrier 302 taught by Pearson.9 According to Ibarra, such a
substitution, to meet the claim limitation that the “release layer is contiguous
with said flexible support,” would require elimination of prime coating
layer 304 (App. Br. 15-16), which Pearson provides to render the paper
layer 303 “less porous and substantially impervious to the heat release
agent.” (Pearson, p. 13, first full para.) Ibarra argues that layer 304 is
essential to the principles of operation of Pearson’s invention, and that the
Examiner’s rejection is thus fatally flawed. (App. Br. 15-16.) Moreover,

4 Examiner’s Answer mailed 13 May 2008. (“Ans.”).
5 David Pearson, Glass Treatment Process and Apparatus, WO 98/43832
(1998).
6 Tim Parker et al., Heat Transferable Laminate, U.S. Patent 4,927,709
(1990).
7 Gerald W. Newton and Vincent J. Cahill, Digital Thermal Printing
Process, U.S. Patent 6,504,559 B1 (7 January 2003), based on an application
filed 14 September 1998.
8 Raymond B. Seymour & Charles E. Carraher, Jr., Polymer Chemistry, an
Introduction, 380 (3d ed. 1992).
9 For clarity, reference labels are presented in bold font regardless of their
presentation in the original document.
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Appeal 2009-002512
Application 11/071,015

according to Ibarra, there would have been no reason to use the polyethylene
release layer taught by Parker because none of the wax-halo or scuffing
problems Parker seeks to solve for decals adhered to plastic substrates at
relatively low temperatures apply to the decals transferred to glass substrates
at very high temperatures, as taught by Pearson. (App. Br. 18-20.)
The Examiner responds that the term the term “contiguous” includes
the sense of being “in close proximity without actually touching or near” in
its meaning. (Ans. 8.) Based on this interpretation, the Examiner concludes
that the term “contiguous” permits an intervening thin layer between the
release layer and the paper, as long as the two outer layers remain close to
one another. (Id. at 9). Moreover, according to the Examiner, the term
“flexible support consisting essentially of paper” [claim 1, part (c)] includes
materials that do not change the basic and novel characteristic of the support,
which is, the Examiner argues, that the support is flexible. (Id.)
Accordingly, the Examiner finds that the “flexible support” reads on paper
303 together with prime coating layer 304. (Id. at 9.) Finally, the Examiner
argues, one skilled in the art would have recognized that, because Parker
does not require a prime coating layer, one could replace Pearson’s wax
release layer with the polyethylene layer and not use Pearson’s prime
coating layer. (Id. at 10.)
The issues dispositive of this appeal are thus:
(1) are the Examiner’s interpretations of the claim limitations
correct?
alternatively,
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Application 11/071,015

(2) has Ibarra proven error in the Examiner’s determination that
there would have been adequate motivation to substitute Pearson’s
wax release layer and prime coating layer with Parker’s
polyethylene release layer?
B. Findings of Fact
Findings of fact throughout this Opinion are supported by a
preponderance of the evidence of record.
The 015 Specification
1. The features of the claimed system most relevant to this appeal are
illustrated in Figure 30, which is reproduced below:

{Figure 30 shows a decal partially transferred to a substrate}
2. The layers and components of the layers shown in Figure 30 are
described with respect to embodiments illustrated in other figures.
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Appeal 2009-002512
Application 11/071,015

3. As shown in Figure 30, a decal transfer assembly comprises an ink
image layer 222 that is supported by transferable overcoat 242.
4. Ink image layer 222 contains a solid, volatile, carbonaceous binder
(cf. Spec. 32, ll. 12-29, describing the “frosting ink layer” 202 shown in
Figure 12) and a glass-forming “frit,” and opacifying agents (id. at l. 30, to
33, l. 32).
5. The 015 Specification explains that the volatile carbonaceous binders
are made from polymers such as polyvinylbutyral, ethyl cellulose, or
polymethylmethacrylate (Spec. 38, ll. 1-4), which are said to be transformed
into gases at temperatures greater than 500°C, leaving a residue of less than
about 5 weight percent of the original binder. (Id. at ll. 20-26.)
6. Transferable covercoat 242 lies on wax release layer 36, which in turn
lies on flexible paper support 226.
7. Pressure sensitive adhesive layer 412 overlies the decal assembly to
permit adhesive transfer of the decal to a glass or ceramic substrate 12.
8. On raising the temperature from about 60°C to about 150°C,
depending on the wax release layer (Spec. 23, l. 5-7), the wax release
layer 36 softens so the decal can be separated from the paper support 226
and adhesively transferred to the glass substrate 12.
9. According to the 015 Specification, the substrate bearing the
transferred decal is placed in a kiln at 621°C for 10 minutes to burn away the
binder and leave a mixture of film-forming glass frit, opacifying agents, and
ink on the substrate. (Spec. 73, ll. 21-27.)
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Appeal 2009-002512
Application 11/071,015

Pearson
10. Pearson describes a system in which glass substrates are washed
(Pearson, p. 16, first line), conveyed to a station where decals are heat-
transferred from paper carriers to the glass substrates (id., 2d para.), then
transferred to an oven in which the decals are fused to the substrate at still
higher temperatures (id., 3d para.), tempered (id. at 19, first full para.) and
finally quenched (id. at 20, first para.).
11. The decals 301 are carried on a decal carrier 302, as shown in
Figure 3, which is reproduced below:

{Figure 3 is said to show a decal and decal carrier}
12. Decal carrier 301 comprises a bottom paper layer 303, a prime
coating, or barrier layer 304, and a layer 305 of heat release agent. (Pearson,
p. 13, first full para.)
13. Barrier layer 304 is said to render paper layer 303 “less porous and
substantially impervious to the heat release agent,” resulting in a “more
smooth and uniform heat release agent layer.” (Pearson, p. 13, first full
para.)
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Appeal 2009-002512
Application 11/071,015

14. The barrier layer may be a seal coating of starch casein, glue, alkali
metal silicate, water glass, or other alkali metal silicates with a dispersed
filler. (Pearson, p. 13, first full para.)
15. The heat release agent is described as being a relatively high melting
point wax that has only slight solubility and resists penetration by petroleum
hydrocarbons. (Pearson, p. 13, 2d full para.)
16. Waxes such as polyethylene glycol having a softening point in the
approximate range of 65-180°C are said to be preferred. (Pearson, p. 13, 2d
full para.)
17. Pearson does not describe the heat release agent 305 as being in direct
contact with the paper layer 303, the numerical physical properties recited in
claim 5, or digitally printing the image on the cover coating.
Parker
18. Parker describes a heat transferable laminate 7, illustrated in Figure 1,
reproduced below,

{Figure 1 is said to show a heat transferable laminate}
as comprising transferable substrate 15, which is separated from carrier
substrate 10 by release layer 5.
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Appeal 2009-002512
Application 11/071,015

19. The transferable substrate 15 comprises lacquer transfer coating 20,
which is covered by ink design layer 30, which in turn is covered by
adhesive layer 40. (Parker, col. 5, ll. 35-39.)
20. Substrate 15 can be applied to articles such as a plastic bottle (Parker,
Abstract, and col. 3, ll. 16-20) using a platen having a surface temperature
between about 275°F and 425°F (135 to about 218°C) to soften the release
layer 5. (Parker, col. 5, ll. 50-55.)
21. The release system comprising release layer 5 is described as a
polyethylene or equivalent ethylene copolymer (Parker, col. 4, ll. 27-37),
rather than a wax.
22. According to Parker, it was considered “surprising” that “[c]lean
separation of the transfer coating 20 from the polyethylene layer 5 is
achieved without leaving any discernible portion of either layer on the other
when the heated platen or heated platen roller temperature is in the range
between about 275°F. to 425°F.” (Parker, col. 7, ll. 32-36.)
23. Parker teaches further that it is preferable to use clay-coated paper for
sheet 10 “to provide[] a proper smooth barrier coating to prevent the
polyethylene release layer 5 from being drawn into the paper” and to provide
“a smooth polyethylene surface during the heat transfer process.” (Parker,
col. 8, ll. 51-61.)
C. Discussion
As the Appellant, Ibarra bears the procedural burden of showing
harmful error in the Examiner’s rejections. See, e.g., In re Kahn, 441 F.3d
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Application 11/071,015

977, 985-86 (Fed. Cir. 2006) (“On appeal to the Board, an applicant can
overcome a rejection [under § 103] by showing insufficient evidence of
prima facie obviousness”) (citation and internal quote omitted). Arguments
not timely raised have been waived. 37 C.F.R. § 41.37(c)(1)(vii) (2009),
second sentence.
Initially, we note that all of the references on which the Examiner
relies are indisputably prior art with respect to Ibarra’s claimed subject
matter. Concerns (FR 6, item 8; Br. 13) regarding whether David Pearson
would or would not have considered—or have been able to consider—the
teachings of Parker are not ordinarily relevant to the obviousness inquiry.
That inquiry is conducted from the standpoint of a hypothetical person of
ordinary skill in the relevant arts at the time the invention was made, i.e., as
of the filing date of the application under consideration.
Substantively, Ibarra has not disputed the Examiner’s treatment of any
limitations other than the limitations recited in claim 5 relating to the release
coating. Accordingly, all claims stand or fall with claim 5.
We begin by considering the Examiner’s claim interpretation.
Although the Examiner cites a definition of the word “contiguous” that
includes a sense of separation between two things described as being
contiguous, the Examiner has not come forward with any credible evidence
from the 015 Specification indicating that a person having ordinary skill in
the art would have understood that disclosure to have used the term
“contiguous” in a sense broader than the definitions that include “touching,”
or “in contact with,” provided in, e.g., Webster’s Third New International
Dictionary (1993) (“Webster”). Indeed, Webster quotes a line attributed to
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Appeal 2009-002512
Application 11/071,015

the poet William Wordsworth as an example of the broad meaning proposed
by the Examiner. Our reviewing court has explained that “[i]t is well
established that dictionary definitions must give way to the meaning
imparted by the specification.” In re Johnston, 435 F.3d 1381, 1384 (Fed.
Cir. 2006). As there appears to be no support in the 015 Specification for
the Examiner’s broad reading, we reject that proposed interpretation.
The Examiner’s interpretation of the term “flexible substrate
consisting essentially of paper” as permitting the inclusion of coated papers
is similarly dissociated from the use of that term in the 015 Specification.
The 015 Specification describes the flexible support generally at page 20,
and describes several coated papers, e.g., at pages 26-27. But the Examiner
has not provided any analysis demonstrating why any of the uses of the term
indicate that a paper together with a non-paper coating is properly described
as “consisting essentially of paper” in the context of the claims and the
supporting disclosure. Nor is such a use facially apparent in
the 015 disclosure.
The Examiner’s substantive argument, however, stands differently.
The Examiner argues that the artisan “would appreciate [that] the use of
Parker et al[.]’s polyethylene release layer in Pearson’s apparatus would not
require the use of the barrier layer since Parker et al[.] does not require it.”
(Ans. 10.) The evidence of record shows that the polyethylene release layer
taught by Parker performs the release functions of the wax layer 305 taught
by Pearson. Although the Examiner’s finding that Parker does not require a
barrier coating on the paper might be quibbled, given Parker’s
recommendation that a clay coating be used as a barrier coating (Parker,
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Appeal 2009-002512
Application 11/071,015

col. 8, ll. 51-64), we cannot say this error is harmful. The polyethylene
release coating provided by Parker functions in the same way as the release
coating provided by Pearson, and both Parker and Pearson make provisions
to protect, as necessary, the paper carrier layer from invasion by the release
layer. The substitution of functionally equivalent materials and structures to
perform the intended functions is a classical instance of prima facie
obviousness. Far from destroying the “principles of operation” of Pearson,
the Examiner’s rejection observes and respects them.
Ibarra argues further that a person having ordinary skill in the art
would not have been motivated to consider the polyethylene release layers
taught by Parker because Parker is not concerned with a high temperature
fixing process that removes the carbonaceous binders. (Br. 17-25.) These
arguments are not persuasive of harmful error because, for the reasons given
supra, a person having ordinary skill in the art would have considered Parker
for its teachings regarding the low-temperature thermal release function of
the polyethylene layer. Persons having ordinary skill in the art would not
have considered using the entire decal described by Parker in an
inappropriate situation. Moreover, to the extent that such persons would
have considered the binders taught by Parker in the decal, he or she would
have noted the use of polyethylmethacrylate as the primary binder and
cellulose derivatives in Formulation D as the secondary binder resins.
(Parker, col. 12, Table II.) These are the same types of binder resins as those
suggested by Pearson for high-temperature ceramics printing. (Pearson,
p. 14, last para.). Thus, Parker provides the solutions to the compatibility
problems alleged by Ibarra. (Br. 25.)
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Appeal 2009-002512
Application 11/071,015

D. Order
We AFFIRM the rejection of claims 5, 7, 8, and 12 under
35 U.S.C. § 103(a) in view of the combined teachings of Pearson, Parker,
Newton, and Seymour.
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

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HOWARD J. GREENWALD P.C.
70 LINDEN OAKS, THIRD FLOOR
ROCHESTER, NY 14625

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