Ex parte Klinger

Board of Patent Appeals and Interferences

Jun 9, 2000

08397960 (B.P.A.I. Jun. 9, 2000)

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not binding precedent of the Board.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. 24
UNITED STATES PATENT AND TRADEMARK OFFICE
__________
BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
__________
Ex parte FLORIAN KLINGER
__________
Appeal No. 1997-3801
Application 08/397,960
___________
HEARD: MAY 16, 2000
___________
Before PAK, OWENS, and DELMENDO, Administrative Patent Judges.
OWENS, Administrative Patent Judge.
DECISION ON APPEAL
This is an appeal from the examiner’s refusal to allow
claims 1-6 and 5-15 as amended after final rejection. Claims
16-24, which are all of the other claims remaining in the
application, stand withdrawn from consideration by the
examiner as being directed toward a nonelected invention.
THE INVENTION
Appeal No. 1997-3801
Application 08/397,960

Appellant states that a thermo-mechanically sensitive1
substrate is one which is significantly affected as to its
physical properties, appearance or other properties relevant
to its function as a printed substrate when it is passed
between two rollers which are heated to a minimum temperature
of 120EC and pressed against one another with a minimum
pressure of 150 Kg (specification, pages 4-5).
2
Appellant’s claimed invention is directed toward a
process for making laminated plastic cards having a thermo-
mechanically sensitive substrate. Appellant states that the1
conventional laser printing process, wherein a substrate
having an image thereon is passed between heated rollers which
fix or set the print so that it is permanent and stable,
damages thermo-mechanically sensitive substrates
(specification, page 2). Appellant states that a purpose of
the claimed process is to permit thermo-mechanically sensitive
substrates to be used without damage in laser printing, and
that this goal is achieved by use of only partial setting of
the graphic subject matter by radiant heat (specification,
pages 3 and 6). Claim 1 is illustrative and reads as follows:
1. Process for the production of laminated plastic
cards,
comprising a thermo-mechanically sensitive substrate
having a graphic subject matter printed thereon, which
comprises;
Appeal No. 1997-3801
Application 08/397,960

3
1. providing a set of digital instructions, which
defines the graphic subject matter;
2. depositing, by conventional laser printer operations,
printing colors on said thermo-mechanically sensitive plastic
substrate to form said graphic subject matter;
3. only partially setting said graphic subject matter by
radiant heat;
4. juxtaposing to said substrate, carrying said graphic
subject matter, at least a coating film on the printed face
thereof; and
5. bonding said substrate and said face coating film.
THE REFERENCES
Biddle 3,068,140 Dec. 11,
1962
Ohta et al. (Ohta) 3,811,828 May 21,
1974
Warther et al. (Warther) 4,978,146 Dec. 18,
1990
THE REJECTIONS
The claims stand rejected under 35 U.S.C. § 103 as
follows: claims 1, 2, 6-11 and 15 over Warther in view of
Ohta, and claims 3-5 and 12-14 over Warther in view of Ohta
and Biddle.
OPINION
We have carefully considered all of the arguments
advanced by appellant and the examiner and agree with
Appeal No. 1997-3801
Application 08/397,960

The substrate can be Teslin , which is one of the thermo-2 ®
mechanically sensitive materials used by appellant
(specification, page 10).
4
appellant that the aforementioned rejections are not well
founded. Accordingly, we reverse these rejections.
Warther discloses a process for making a laminated
plastic card which can have a thermo-mechanically sensitive
substrate having graphic subject matter printed thereon (col.2
8, lines 37-39). Warther teaches that the printer used to
form the graphic subject matter is programmable (col. 8, line
60; col. 9, line 37), which indicates that the process can
include the use of a set of digital instructions which defines
the graphic subject matter. Use of a laser printer for
forming the graphic subject matter is disclosed (col. 8, lines
43 and 67). After the graphic subject matter has been formed
on the substrate, a coating film is applied to each side of
the substrate, preferably by adhesive bonding (col. 5, lines
14-35; col. 8, lines 6-20).
Warther does not disclose the use of only partial setting
of the graphic subject matter by radiant heat. The examiner
relies upon Ohta for a teaching of fusing and fixing a toner
Appeal No. 1997-3801
Application 08/397,960

See, e.g., column 4, lines 18-23 of Ohta.3
Appellant indicates that “setting” as recited in their4
claim 1 and “fusing” as used by Ohta have the same meaning
(reply brief, page 6).
5
image by use of radiant heat (answer, page 5). Ohta,3
however, does not disclose only partial fusing of the toner. 4
The examiner argues that the degree of fusing is a parameter
which would have been the result of routine experimentation
(answer, page 8).
In order for a prima facie case of obviousness to be
established, the teachings from the prior art itself must
appear to have suggested the claimed subject matter to one of
ordinary skill in the art. See In re Rinehart, 531 F.2d 1048,
1051, 189 USPQ 143, 147 (CCPA 1976). The mere fact that the
prior art could be modified as proposed by the examiner is not
sufficient to establish a prima facie case of obviousness.
See In re Fritch, 972 F.2d 1260, 1266, 23 USPQ2d 1780, 1783
(Fed. Cir. 1992). The examiner must explain why the prior art
would have suggested to one of ordinary skill in the art the
desirability of the modification. See Fritch, 972 F.2d at
1266, 23 USPQ2d at 1783-84. The examiner has not provided
Appeal No. 1997-3801
Application 08/397,960

Biddle, which is applied by the examiner to dependent5
claims 3-5 and 12-14, is not relied upon for any teaching
which would remedy the above-discussed deficiency in the
disclosures of Warther and Ohta.
6
such an explanation but, rather, has merely made an assertion
that one of ordinary skill in the art would have determined
the degree of fusing by routine experimentation. The
motivation relied upon by the examiner for using only partial
fusing comes solely from the description of appellant’s
invention in the specification. Thus, the examiner used
impermissible hindsight when rejecting the claims. See W.L.
Gore & Associates v. Garlock, Inc., 721 F.2d 1540, 1553, 220
USPQ 303, 312-13 (Fed. Cir. 1983), cert. denied, 469 U.S. 851
(1984); In re Rothermel, 276 F.2d 393, 396, 125 USPQ 328, 331
(CCPA 1960). Accordingly, we reverse the examiner’s
rejections.5
DECISION
The rejections under 35 U.S.C. § 103 of claims 1, 2, 6-11
and 15 over Warther in view of Ohta, and claims 3-5 and 12-14
over Warther in view of Ohta and Biddle, are reversed.
REVERSED
Appeal No. 1997-3801
Application 08/397,960

7
)
CHUNG K. PAK )
Administrative Patent Judge )
)
)
) BOARD OF PATENT
TERRY J. OWENS )
Administrative Patent Judge ) APPEALS AND
)
) INTERFERENCES
)
ROMULO H. DELMENDO )
Administrative Patent Judge )
KANE, DALSIMER, SULLIVAN,
KURUCZ, LEVY,
EISELE AND RICHARD
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