Ex Parte Lowe

Board of Patent Appeals and Interferences

Aug 22, 2007

10688583 (B.P.A.I. Aug. 22, 2007)

The opinion in support of the decision being entered today is not
binding precedent of the Board.

UNITED STATES PATENT AND TRADEMARK OFFICE
____________

BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
____________

Ex parte CLIFFORD A. LOWE
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Appeal 2007-1946
Application 10/688,583
Technology Center 1700
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Decided: August 22, 2007
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Before CHUNG K. PAK, CHARLES F. WARREN, and
JEFFEREY T. SMITH, Administrative Patent Judges.

PAK, Administrative Patent Judge.

DECISION ON APPEAL
This is a decision on an appeal under 35 U.S.C. § 134 from the
Examiner's refusal to allow claims 13, 5, 7 through 13 and 19 through 29,
all of the claims pending in the above-identified application. We have
jurisdiction pursuant to 35 U.S.C. § 6.

Appeal 2007-1946
Application 10/688,583

STATEMENT OF THE CASE
The subject matter on appeal is directed to a multilayer graphic article
useful for, inter alia, communicating a message or advertisement in both
indoor and outdoor environments (Specification 1). The multilayer graphic
article can be adhered to a floor for the purpose of advertising consumer
goods or providing directions or warnings (id). Further details of the
appealed subject matter are recited in representative claims 19 and 25
reproduced below:
19. A multilayer graphic article comprising:

a) a transparent outer protective layer,

b) an outer adhesive layer, optionally protected by a release liner, and

c) disposed between said outer layers, a fabric matrix comprising
upper and lower surfaces and bearing on its upper surface a printed image,

wherein said outer protective layer is disposed on and directly
contacts said printed image and wherein said outer adhesive layer is directly
disposed on said lower surface of said fabric matrix.

25. A multilayer graphic article comprising:

a) a transparent outer protective layer comprising a textured
upper surface,

b) an outer adhesive layer, optionally protected by a release
liner, and

c) disposed between said outer layers, a fabric matrix
comprising upper and lower surfaces, said upper surface bearing a primer
layer derived from a composition comprising an acrylic or urethane resin,
said lower surface bearing a primer layer derived from a composition
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Application 10/688,583

comprising a latex or polyurethane, said primed upper surface of said fabric
bearing a printed image,

wherein said outer protective layer is disposed on and directly
contacts said printed image and wherein said outer adhesive layer is directly
disposed on said primed lower surface of said fabric matrix.

According to page 3 of the Specification:
The matrices or supports in the practice of this invention
are fabrics. Fabrics include those textile structures comprising
mechanically interlocked fibers or filaments. These fibers or
filaments can be woven or non-woven.

The Specification at pages 4 and 5 also defines the claimed primer layer as
follows:
Depending on the fabric employed, it may be
advantageous to prime the fabric prior to printing thereon or
disposing the graphic layer thereon. It may also be
advantageous to prime the fabric prior to adhering the adhesive
layer thereto. In some embodiments, it may be advantageous to
employ a different primer on each side of the fabric, or
combination of primers. As known by those skilled in the art,
there are a multitude of primer compositions that can be
employed to prime fabrics. The preferred primers include those
that provide a barrier that will prevent the adhesive or the
materials employed in creating the graphic or adhesive from
penetrating through the fabric in a deleterious manner. The
preferred primers may also serve to activate the surface of the
fibers so as to facilitate and improve the printing or placement
of a graphic on the fabric or allow the adhesive to form a
stronger bond with the fabric.
….

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Application 10/688,583

Useful primers are commercially available. One that has
been found to be particularly useful is a self-crosslinking
acrylic latex (medium hardness) that is compounded with TiO2,
white clay, and thickeners. This primer is very similar to white
paint.

As evidence of unpatentability of the claimed subject matter, the
Examiner has relied upon the following references:
Ho US 5,468,532 Nov. 21, 1995
Mueller US 6,180,228 B1 Jan. 30, 2001
Kittel US 6,228,486 B1 May 8, 2001
The Examiner has rejected the claims on appeal as follows1:
1) Claims 3, 8, 11, 12, 19, and 20 through 24 under 35 U.S.C.
§ 102(b) as anticipated by the disclosure of Mueller;
2) Claims 5, 7 through 9, 11, 12, 19, and 20 under 35 U.S.C.
§ 102(b) as anticipated by the disclosure of Kittel;
3) Claims 5, 20, and 25 through 29 under 35 U.S.C. § 103(a) as
unpatentable over the disclosure of Mueller;
4) Claim 13 under 35 U.S.C. § 103(a) as unpatentable over the
combined disclosures of Mueller and Ho; and
5) Claim 10 under 35 U.S.C. § 103(a) as unpatentable over the
disclosure of Kittel.
The Appellant appeals from the Examiner’s decision rejecting the
claims on appeal under 35 U.S.C. §§ 102(b) and 103(a).

1 According to the Examiner, “[t]he rejection of claims 13, 25 and 29 in view
of Kittel et al. (US 6,228,486) have [sic, has] been withdrawn….” (Answer
2).

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Application 10/688,583

ISSUES
1. Has the Examiner demonstrated that the claimed fabric matrix
includes a woven or nonwoven scrim layer or a layer of fibrous material of
the reinforced base layer taught by Mueller within the meaning of 35 U.S.C.
§ 102(b)?
2. Has the Examiner demonstrated that the claimed protective
layer embraces Kittel’s primer and abrasion resistant layers within the
meaning of 35 U.S.C. § 102(b)?
3. Has the Examiner demonstrated that Mueller would have
suggested employing the claimed specific primer layers directly on the upper
and lower surfaces of the fabric matrix of the multilayer graphic article
recited in claim 25 within the meaning of 35 U.S.C. § 103?
4. Has the Examiner demonstrated that Mueller and Ho would
have suggested an outer protective layer having the claimed thickness, i.e.,
about 2 mils to about 15 mils?

FACTS, PRINCIPLES OF LAW, AND ANALYSES
1. ANTICIPATION
Under 35 U.S.C. § 102, to establish anticipation, a single prior art
reference must describe, either expressly or under the principles of
inherency, each and every element of a claimed invention. See, e.g., In re
Spada, 911 F.2d 705, 708, 15 USPQ2d 1655, 1657 (Fed. Cir. 1990).

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Application 10/688,583

1(A). Rejection of Claims 3, 8, 11, 12, 19, and 20 through 24 Based on
Mueller
There is no dispute that Mueller teaches a multilayer graphic article
for an outdoor advertising or display, comprising a reinforced base layer, a
printed image layer on the upper surface of the base layer, an outer adhesive
layer directly on the lower surface of the base layer, and a transparent outer
protective layer covering the printed image layer. (Compare, e.g., Answer
3-4 with Br. 11-15.)
Therefore, the dispositive question is whether the claimed fabric
matrix encompasses the reinforced base layer taught by Mueller within the
meaning of 35 U.S.C. § 102(b). On this record, we answer this question in
the affirmative.
During prosecution of the application, the Examiner must give the
verbiage of the claims the broadest reasonable interpretation in light of the
Specification. In re Morris, 127 F.3d 1048, 1054-056, 44 USPQ2d 1023,
1027 (Fed. Cir. 1997); see also Philips v. AWH Corp., 415 F.3d 1303, 1313,
75 USPQ2d 1321, 1326-327(Fed. Cir. 1998)(en banc)(“[T]he person of
ordinary skill in the art is deemed to read the claim term not only in the
context of the particular claim, but in the context of the entire patent,
including the specification…. The specification is ‘the single best guide to
the meaning of a disputed term,’ and that the specification ‘acts as a
dictionary when it expressly defines terms used in the claims or when it
defines term by implication.”) As indicated supra, the Specification at page
3 states that:

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Application 10/688,583

The matrices or supports in the practice of this invention are
fabrics. Fabrics include those textile structures comprising
mechanically interlocked fibers or filaments. These fibers or
filaments can be woven or non-woven.

Claim 9, which further limits the subject matter recited in claim 19, also
recites that the claimed “fabric matrix includes filaments or fibers.” We find
that Mueller teaches at column 5, lines 34-44:
If high traffic levels are expected, to provide more convenient
removability from the substrate, or to enhance compatibility
with an adhesive layer, a surface of the base layer 16, or
selected portions thereof, can be reinforced. For example, a
thin metal or foil layer, a woven or nonwoven scrim layer, or a
layer of fibrous material (not shown in FIG. 1) can be applied
to a surface of the base layer with a suitable
adhesive….[Emphasis added.]

It follows that the claimed fabric matrix includes Mueller’s “woven or
nonwoven scrim layer” or “layer of fibrous material” which is attached to
the lower surface of the base layer for the purpose of improving its
compatibility with the adhesive layer. It is important to note that the claims
on appeal do not exclude the polymeric part of the reinforced base layer
taught by Mueller. See, e.g., In re Baxter, 656 F.2d 679, 686-87, 210 USPQ
795, 802-03 (CCPA 1981)(“As long as one of the monomers in the reaction
is propylene, any other monomer may be present, because the term
‘comprise’ permits the inclusion of other steps, elements, or materials.”)
Accordingly, we concur with the Examiner that Mueller renders the
subject matter defined by claims 3, 8, 11, 12, 19, and 20 through 24
anticipated within the meaning of 35 U.S.C. § 102(b).

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Application 10/688,583

1(b). Rejection of Claims 5, 7 through 9, 11, 12, 19, and 20 Based on Kittel
There is no dispute that Kittel describes a thermal transfer laminate
comprising a first or core layer made of the claimed fabric matrix (112 or
212), an underlying adhesive layer (118 or 230), an image printing layer
(120 and/or 220) an overlying adhesive promoting or primer layer (130
and/or 135) and an abrasion resistant transparent coating layer (140) over the
primer (130 and/or 135). (Compare Answer 5 with Br. and Reply Br. in
their entirety.) Kittel does not teach placing the abrasion resistant layer
directly on the image printing layer. However, the Examiner takes the
position that Kittel teaches placing an outer protective layer directly on the
image printing layer (Answer 5). According to the Examiner, the claimed
protective layer includes both the primer layer and the abrasion resistant
layer taught by Kittel (id).
The dispositive question is, therefore, whether the claimed transparent
outer protective layer includes both the primer layer and the image resistant
layer taught by Kittel. On this record, we answer this question in the
negative.
The Specification distinguishes the claimed transparent outer
protective layer from the claimed primer layer (Specification 4-7). The
Specification also indicates that the primer layers are placed directly over the
claimed fabric matrix, not over an image printing layer, to “prevent the
adhesive or the materials employed in creating the graphic…from
penetrating through the fabric in a deleterious manner.” (Specification 2, 4,
and 5). Finally, claim 19 calls for a single outer protective layer different
from a primer layer directly on an image printing layer. (See, e.g., claims 19
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Application 10/688,583

and 20). Thus, we determine that the Examiner’s interpretation of the
claimed outer protective layer as being inclusive of a primer layer is
unreasonable and inconsistent with the Specification and is contrary to the
plain meaning of the words in the claims on appeal.
Accordingly, we concur with the Appellant that Kittel did not render
the subject matter defined by claims 5, 7 through 9, 11, 12, 19, and 20
anticipated within the meaning of 35 U.S.C. § 102(b).
2. OBVIOUSNESS
Under 35 U.S.C. § 103, the factual inquiry into obviousness requires a
determination of: (1) the scope and content of the prior art; (2) the
differences between the claimed subject matter and the prior art; (3) the level
of ordinary skill in the art; and (4) secondary consideration (e.g., unexpected
results). Graham v. John Deere Co. of Kansas City, 383 U.S. 1, 17-18,
148 USPQ 459, 467(1966). “[A]nalysis [of whether the subject matter of a
claim would have been obvious] need not seek out precise teachings directed
to the specific subject matter of the challenged claim, for a court can take
account of the inferences and creative steps that a person of ordinary skill in
the art would employ.” KSR Int’l Co. v. Teleflex, Inc., 127 S. Ct. 1727,
1740-741, 82 USPQ2d 1385, 1396 (2007) quoting In re Kahn, 441 F.3d 977,
988, 78 USPQ2d 1329, 1336-337 (Fed. Cir. 2006); see also DyStar
Textilfarben GmBH & Co. Deutschland KG v. C.H. Patrick Co., 464 F.3d
1356, 1361, 80 USPQ2d 1641, 1645 (Fed. Cir. 2006)(“The motivation need
not be found in the references sought to be combined, but may be found in
any number of sources, including common knowledge, the prior art as a
whole, or the nature of the problem itself.”); In re Bozek, 416 F.2d 1385,
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1390, 163 USPQ 545, 549 (CCPA 1969)(“Having established that this
knowledge was in the art, the examiner could then properly rely, as put forth
by the solicitor, on a conclusion of obviousness ‘from common knowledge
and common sense of the person of ordinary skill in the art without any
specific hint or suggestion in a particular reference.’”). The analysis
supporting obviousness, however, should be made explicit and should
“identify a reason that would have prompted a person of ordinary skill in the
art to combine [known] elements” in the manner claimed. KSR, 127 S. Ct. at
1731, 82 USPQ2d at 1389.

2(A). Rejection of Claim 5, 20, and 25 through 29 Based on Mueller
The Examiner refers to adhesive layers taught by Mueller as being
corresponded to the claimed primer layer (Answer 5-6). The dispositive
question is, therefore, whether the claimed primer layers embrace the
adhesive layers taught by Mueller. On this record, we answer this question
in the negative.
As is apparent from pages 4-5 of the Specification, the claimed primer
layers are different from adhesive layers. Indeed, both the Specification and
Kittel (one of the prior art relied upon by the Examiner) distinguish primers
from adhesives.
Accordingly, we concur with the Appellant that the Examiner has not
demonstrated that Mueller would have rendered the subject matter of claims
5, 20, and 25 through 29 obvious to one of ordinary skill in the art within the
meaning of 35 U.S.C. § 103.

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Application 10/688,583

2(B). Rejection of Claim 10 Based on Kittel
As indicated supra, Kittel does not teach placing its abrasion resistant
(protective) layer directly on an image printing layer. However, on this
record, we do not find any reason proffered by the Examiner, which would
have prompted one of ordinary skill in the art to employ Kittel’s abrasion
resistant layer directly on an image printing layer.
Accordingly, we determine that the Examiner has not established that
Kittel would have rendered the subject matter of claim 10 obvious to one of
ordinary skill in the art within the meaning of 35 U.S.C. § 103.

2(C). Rejection of Claim 13 Based on Mueller and Ho
The Appellant has not disputed the Examiner’s determination that
Mueller and Ho would have suggested to one of ordinary skill in the art to
employ the claimed thickness to Mueller’s protective layer within the
meaning of 35 U.S.C. § 103. (Compare Answer 6-7 with Br. and Reply Br.
in their entirety.) Indeed, Ho, which teaches the claimed thickness for a
protective layer as correctly found by the Examiner, is referred to at column
6, lines 55-66, of Mueller. Moreover, from our perspective, utilizing a
protective coating layer having appropriate thicknesses, including those
claimed, based on protective needs is well within the ambit of one of
ordinary skill in the art. See, e.g., In re Boesch, 617 F.2d 272, 276,
205 USPQ 215, 219 (CCPA 1980) (“[D]iscovery of an optimum value of a
result effective variable in a known process is ordinarily within the skill of
the art.”)
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Accordingly, we concur with the Examiner that Mueller and Ho
would have rendered the subject matter defined by claim 13 obvious to one
of ordinary skill in the art within the meaning of 35 U.S.C. § 103.2

CONCLUSION
In summary:
1) The rejection of claims 3, 8, 11, 12, 19, and 20 through 24
under 35 U.S.C. § 102(b) based on Mueller is affirmed;
2) The rejection of claims 5, 7 through 9, 11, 12, 19, and 20 under
5 U.S.C. § 102(b) based on Kittel is reversed;
3) The rejection of claims 5, 20, and 25 through 29 under
35 U.S.C. § 103(a) based on Mueller is reversed;
4) The rejection of claim 13 under 35 U.S.C. § 103(a) based on
Mueller and Ho is affirmed; and
5) The rejection of claim 10 under 35 U.S.C. § 103(a) based on
Kittel is reversed.

ORDER
The decision of the Examiner is affirmed-in-part.

2 In the event of further prosecution, the Examiner is advised to determine
whether Mueller alone, or with other prior art, affects the patentability of the
subject matter of claim 10. In this regard, we take official notice that
polyester, polyamides and polyaramids are conventional fabric materials, i,e.
conventional fibrous materials.
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Application 10/688,583

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-IN-PART

cam

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P O Box 2368
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