Ex parte Lubar

Board of Patent Appeals and Interferences

Jul 19, 1999

08151454 (B.P.A.I. Jul. 19, 1999)

Application for patent filed November 15, 1993.1
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not binding precedent of the Board.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. 17
UNITED STATES PATENT AND TRADEMARK OFFICE
__________
BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
__________
Ex parte MICHAEL J. LUBAR
__________
Appeal No. 95-4147
Application 08/151,4541
___________
ON BRIEF
___________
Before HANLON, WALTZ and LIEBERMAN, Administrative Patent
Judges.
WALTZ, Administrative Patent Judge.
DECISION ON APPEAL
This is an appeal under 35 U.S.C. § 134 from the
examiner’s final rejection of claims 1 through 6, 10 through
25 and 29, which are all of the claims remaining in this
Appeal No. 95-4147
Application 08/151,454
2
application. Subsequent to the appeal, the examiner has
indicated that claims
11 and 13 are allowed (Answer, page 1). Accordingly, the
claims on appeal before us are claims 1-6, 10, 12, 14-25 and
29.
According to appellant, the invention is directed to a
transfer medium using a specially designed transfer sheet to
receive inkjet ink images (Brief, page 2). Claim 1 is
illustrative of the subject matter on appeal and is reproduced
below:
1. A transfer sheet for transferring inkjet ink images
and text to substrates that will not generally fit within
inkjet printing machinery, said transfer sheet comprising:
a substrate layer;
a polymer release layer disposed over said substrate
layer;
a carrier layer disposed over said polymer release layer
and having greater cohesion than adhesion to said polymer
release layer, said carrier layer being removable from said
release and substrate layers and generally being ink-
impermeable; and
an ink receiving layer disposed over said carrier layer
for receiving inkjet inks, said ink receiving layer being
adhered to said carrier layer.
Appeal No. 95-4147
Application 08/151,454
The final rejection of claims 1-6, 10, 12, 14, 20-25 and2
29 included “af Strom”, U.S. Patent No. 5,032,449, as a
primary reference (see page 2 of the final rejection). The
examiner has included “af Strom” as “prior art of record
relied upon in the rejection of claims under appeal” (Answer,
page 3) but does not include “af Strom” in the statement of
the rejection or in any discussion (see the Answer, page 4).
Accordingly, we consider any rejection involving “af Strom” as
having been withdrawn. See the Manual of Patent Examining
Procedure, § 1208, p. 1200-14 and -15, 7th ed., July 1998, and
Ex parte Emm, 118 USPQ 180, 181 (Bd. App. 1957).
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The examiner has relied upon the following references as
evidence of obviousness:
Rohowetz et al. (Rohowetz) 4,179,397 Dec. 18, 1979
Smith et al. (Smith) 4,318,953 Mar. 9, 1982
Pointon 4,391,853 Jul. 5, 1983
Desjarlais 4,775,594 Oct. 4, 1988
Barton 4,842,950 Jun. 27, 1989
Hindagolla et al. (Hindagolla) 5,108,503 Apr. 28, 1992
Maruyama et al. (Maruyama) 5,132,146 Jul. 21, 1992
Claims 1, 15 and 20 stand rejected under 35 U.S.C. § 112,
second paragraph, as being indefinite for failing to
particularly point out and distinctly claim the subject matter
which applicant regards as the invention (Answer, page 3).
Claims 1-6, 10, 12, 14, 20-25 and 29 stand rejected under 35
U.S.C. § 103 as unpatentable over Pointon in view of Maruyama
and Hindagolla (Answer, page 4). Claims 15-19 stand rejected2
under 35 U.S.C. § 103 as unpatentable over the references
Appeal No. 95-4147
Application 08/151,454
The new ground of rejection of claims 14 and 29 under the3
second paragraph of § 112 has been withdrawn in view of the
entry of appellant’s amendment dated June 19, 1995, Paper No.
8 (see the Supplemental Answer dated July 10, 1995, Paper No.
9, page 2).
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applied above further in view of Desjarlais, Smith, Barton and
Rohowetz (Answer, page 6). The examiner has made a new ground
of rejection in the Answer of all the appealed claims under 35
U.S.C. § 103 as
unpatentable over Pointon (Answer, page 8). We reverse all3
of the examiner’s rejections for reasons which follow.
OPINION
A. The Rejection under § 112, Second Paragraph
The examiner concludes that the phrase “generally being
ink-impermeable” recited in appealed claims 1, 15 and 20 is
“vague and indefinite” because something is or is not
impermeable (Answer, page 3). The examiner states that the
word “impermeable” does not define a matter of degree but is
an absolute (sentence bridging pages 3-4 of the Answer).
Appeal No. 95-4147
Application 08/151,454
All reference to the Reply Brief is to the “Response to4
Examiner’s Answer” dated June 19, 1995, Paper No. 8. The
“Response to Supplemental Examiner’s Answer” dated July 24,
1995, Paper No. 10, has been refused entry by the examiner
(see the Letter dated Aug. 15, 1995, Paper No. 11).
Accordingly, the response of Paper No. 10 is not part of the
record before us on appeal. It is noted that the “Order
Remanding to Examiner” dated Aug. 5, 1998, Paper No. 15,
required the examiner to respond to, inter alia, the “Response
to Examiner’s Communication and Request to Strike Supplemental
Examiner’s Answer” (Paper No. 12). The Letter from the
examiner dated Dec. 24, 1998, Paper No. 16, failed to respond
to Paper No. 12. However, this failure to respond by the
examiner is immaterial since it does not affect our decision.
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Appellant argues that the term “generally” is not
ambiguous and that one reading these claims would easily
understand the meaning and know the metes and bounds recited
(Brief, page 7). Appellant submits that the phrase “generally
being ink-impermeable” refers to a relative permeability in
keeping with the teachings of the specification (Reply Brief,
page 2).4
“The legal standard for definiteness is whether a claim
reasonably apprises those of skill in the art of its scope.”
In re Warmerdam, 33 F.3d 1354, 1361, 31 USPQ2d 1754, 1759
(Fed. Cir. 1994). “It is well established that claims are not
to be read in a vacuum, and limitations therein are to be
Appeal No. 95-4147
Application 08/151,454
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interpreted in light of the specification in giving them their
broadest reasonable interpretation. [Internal quotes and
citation omitted].” In re Marosi, 710 F.2d 799, 802, 218 USPQ
289, 292 (Fed. Cir. 1983). When words of degree are used in a
claim, it must be determined if one of ordinary skill in the
art would be apprised of the scope of the claim when the claim
is read in light of the specification. Seattle Box Co., Inc.
v. Industrial Crating & Packing, Inc., 731 F.2d 818, 826, 221
USPQ 568, 574 (Fed. Cir. 1984).
The phrase “generally being ink-impermeable” occurs in
appealed claims 1, 15 and 20 as a limitation of the carrier
layer. Appellant’s specification teaches that a
characteristic of the carrier layer is as follows:
A second characteristic of the carrier sheet is its
ability to resist penetration of the inkjet ink.
This ink resistance is necessary, so that the ink
will not coat the silicone surface. The carrier
must adhere to the silicone to allow for transport
and manipulation which would otherwise be impaired by
the penetrating ink. (Specification, page 3, lines 2-
7).
Appellant also teaches that
A second design criterion of the carrier sheet 12 is
Appeal No. 95-4147
Application 08/151,454
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its ability to resist penetration of inkjet ink that
is later applied. This ink resistance is necessary, so
that the inkjet ink will not coat the silicone
surface. (Specification, page 5, lines 24-28).
We determine that one of ordinary skill in this art would
have been apprised of the scope of the phrase “generally being
ink-impermeable” when read in light of the above quotes from
the specification. One of ordinary skill in this art would
have been apprised that the claimed phrase encompasses carrier
layers that are ink-impermeable or permeable to inkjet ink as
long as the inkjet ink does not reach and coat the silicone
release layer surface. Accordingly, the rejection of claims
1, 15 and 20 under the second paragraph of § 112 is reversed.
B. The Rejections under § 103
All of the examiner’s rejections under § 103 are based on
Pointon alone or in view of various secondary references.
Accordingly, our opinion will first focus on Pointon.
“[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.” In re Oetiker, 977 F.2d 1443,
1445, 24 USPQ2d 1443, 1444 (Fed. Cir. 1992). The examiner
Appeal No. 95-4147
Application 08/151,454
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states that “Pointon discloses a transfer sheet comprising a
substrate layer coated with a silicone release coating (lines
43-46, col. 12)” (Answer, page 4). However, Pointon actually
discloses that “[t]he release property may be a natural
characteristic of the carrier material or it may be imparted
to the carrier by impregnating or coating the carrier with
release material such as silicone...” (Column 12, lines 43-
46). Therefore Pointon discloses that the silicone release
layer is coated over the carrier layer while the transfer
sheet of appealed claim 1 requires “a carrier layer disposed
over said polymer release [silicone] layer”. Pointon also
fails to disclose any substrate layer. These deficiencies in
the disclosure of Pointon have not been addressed by the
examiner.
The examiner’s rejection may also be interpreted as
equating the “carrier layer” of Pointon with the “substrate
layer” of appealed claim 1 (see the Answer, page 4, citing
Pointon, column 12, lines 43-46). Although this
Appeal No. 95-4147
Application 08/151,454
In fact, the examiner’s position is not clear since the5
examiner states that “the image-receiving and carrier layers
disclosed in Pointon are comparable to the ink-receiving and
carrier layer compositions recited” in various claims on
appeal (Answer, page 10). If the examiner compares the
“carrier layer” of the appealed claims to the “carrier layer”
of Pointon, the silicone release layer of Pointon does not
correspond to the “polymer release layer”required by the
claims on appeal (see the discussion above).
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interpretation was not explained by the examiner , it would5
resolve the deficiency in the disclosure of Pointon noted
above since the “silicone release layer” of Pointon would
therefore be coated over the “substrate layer” (i.e., the
“carrier layer” of Pointon). However, the examiner’s
characterization of the “adhesive precursor layer” of Pointon
as equivalent to the “carrier layer” in the claims on appeal
is without any basis in the record before us (see the Answer,
page 4, citing Pointon, column 15, lines 38-41, and column 16,
lines 44-49). The “carrier layer” of the claimed transfer
sheet must have “greater cohesion than adhesion to said
polymer release layer” and be “removable from said release and
substrate layers” (see appealed claim 1). The examiner has
not pointed to any disclosure, teaching or suggestion in
Pointon that the “adhesive precursor layer” has greater
Appeal No. 95-4147
Application 08/151,454
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cohesion than adhesion to the release layer and has release
properties as required of the “carrier layer” in appealed
claim 1.
The secondary references to Maruyama, Hindagolla,
Desjarlais, Smith, Barton, and Rohowetz do not cure the
deficiencies of Pointon detailed above (see the Answer, pages
5-7, for the application of these secondary references). For
the foregoing reasons, we determine that the examiner has not
established a prima facie case of obviousness. Accordingly,
the rejection of claims 1-6, 10, 12, 14, 20-25 and 29 under §
103 as unpatentable over Pointon in view of Maruyama and
Hindagolla is reversed. Similarly, the rejection of claims
15-19 under § 103 as unpatentable over Pointon in view of
Maruyama and Hindagolla further in view of Desjarlais, Smith,
Barton, and Rohowetz is reversed. The rejection of all the
appealed claims under § 103 as unpatentable over Pointon is
also reversed.
C. Summary
The rejection of claims 1, 15 and 20 under § 112, second
paragraph, is reversed. The rejection of all of the appealed
Appeal No. 95-4147
Application 08/151,454
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claims under § 103 over Pointon alone is reversed. The
rejection of claims 1-6, 10, 12, 14, 20-25 and 29 under § 103
over Pointon in view of Muruyama and Hindagolla is reversed.
The rejection of claims 15-19 under § 103 over Pointon in view
of Muruyama and Hindagolla further in view of Desjarlais,
Smith, Barton and Rohowetz is reversed.

The decision of the examiner is reversed.
REVERSED
ADRIENE LEPIANE HANLON )
Administrative Patent Judge )
)
)
) BOARD OF PATENT
THOMAS A. WALTZ )
Administrative Patent Judge ) APPEALS AND
)
) INTERFERENCES
)
PAUL LIEBERMAN )
Administrative Patent Judge )
Appeal No. 95-4147
Application 08/151,454
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TAW/pgg
Ronald W. Citkowski
Gifford, Krass, Groh, Sprinkle,
Patmore, Anderson & Citkowski, P.C.
280 N. Woodward, Suite 400
Birmingham, Michigan 48009