Ex parte MAHN

Board of Patent Appeals and Interferences

Apr 29, 1999

08259891 (B.P.A.I. Apr. 29, 1999)

Application for patent filed June 15, 1994. According1
to appellant, this application is a division of Application
No. 08/027,954, filed March 8, 1993, now U.S. Patent No.
5,380,391, issued January 10, 1995.
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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journal and (2) is not binding precedent of the Board.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. 13
UNITED STATES PATENT AND TRADEMARK OFFICE
________________
BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
________________
Ex parte JOHN MAHN
________________
Appeal No. 96-3781
Application No. 08/259,8911
________________
ON BRIEF
________________
Before KIMLIN, ELLIS and LIEBERMAN, Administrative Patent
Judges.
KIMLIN, Administrative Patent Judge.
DECISION ON APPEAL
Appeal No. 96-3781
Application No. 08/259,891
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This is an appeal from the final rejection of claims 1-5
and 10, all the claims remaining in the present application.
Claims 1 and 10 are illustrative:
1. An indicia bearing transfer for use on an elastomeric
substrate comprising:
an elastomeric layer compatible with an elastomeric
substrate;
a solvent ink layer providing indicia on said elastomeric
layer, said solvent ink layer having a color contrasting with
said elastomeric layer; and
a clear thermoset layer covering said solvent ink layer.
10. A composite material comprising a cured elastomeric base
layer;
a cured elastomeric sheet bonded to said cured
elastomeric base layer;
a clear thermoset layer coating at least a portion of
said elastomeric sheet;
indicia comprising sublimation dye heat transferred into
said thermoset layer;
The examiner relies upon the following references as
evidence of obviousness:
Knudsen 4,098,935 Jul. 4, 1978
Gartland et al. (Gartland) 5,160,383 Nov. 3, 1992
Appellant's claimed invention is directed to a transfer,
or laminated sheet, comprising an elastomeric layer, indicia
of solvent ink on the elastomeric layer and a clear thermoset
Appeal No. 96-3781
Application No. 08/259,891
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layer covering the solvent ink. The transfer finds utility as
being bonded to an elastomeric substrate, such as a tire, to
provide identifying markings thereon.
Appealed claims 1-5 and 10 stand rejected under 35 U.S.C.
§ 103 as being unpatentable over Gartland in view of Knudsen.
In addition, claims 1-5 stand rejected under 35 U.S.C. § 112,
second paragraph.
We consider first the examiner's rejection of claims 1-5
under § 112, second paragraph. According to the examiner, the
claimed expression "a solvent ink" is indefinite because "it
is not clear whether there is solvent still present on the
article" (page 3 of Answer).
It is well settled that in evaluating the definiteness of
claim language, the language must be read in light of the
specification as it would be by one of ordinary skill in the
art. In re Sneed, 710 F.2d 1544, 1548, 218 USPQ 385, 388
(Fed. Cir. 1983); In re Moore, 439 F.2d 1232, 1235, 169 USPQ
236, 238 (CCPA 1971). In the present case, we agree with
appellant that when the claim language "a solvent ink" is read
in light of the specification, one of ordinary skill in the
art would readily understand that the language is defining a
Appeal No. 96-3781
Application No. 08/259,891
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type of ink known in the art that is provided on the
elastomeric layer. We further agree with appellant that it is
immaterial whether some solvent remains on the elastomeric
layer, although it is highly likely that part of the solvent
will migrate into the layer. Accordingly, we will not sustain
the examiner's § 112, second paragraph rejection.
We will also not sustain the examiner's rejection of
claims 1-5 under 35 U.S.C. § 103 over the collective teachings
of Gartland and Knudsen. The flaw in the examiner's rejection
is that even when the references are combined the claimed
indicia bearing transfer does not result. Gartland, the
primary reference, does not disclose indicia of a solvent ink
layer on an elastomeric layer. Rather, Gartland teaches the
incorporation of a colorant, such as a dye or a pigment, in
the elastomeric layer. From Gartland's disclosure at column
5, lines 34 et seq., as well as EXAMPLES 1 and 2, it can be
seen that the colorant material is blended into the
elastomeric composition. Also, Gartland does not disclose the
claimed clear thermoset layer which covers the solvent ink
layer. While the examiner relies upon Knudsen for this
teaching, appellant accurately points out that Knudsen teaches
Appeal No. 96-3781
Application No. 08/259,891
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printing indicia of ink on top of the protective layer.
Consequently, the combined teachings of Gartland and Knudsen
do not result in the claimed indicia bearing transfer.
We will sustain the examiner's rejection of claim 10.
Knudsen discloses the claimed composite material comprising a
cured elastomeric base layer, an elastomeric sheet bonded to
the cured elastomeric base layer, a thermoset coating on the
elastomeric sheet and indicia comprising ink on the thermoset
layer. Although Knudsen does not disclose that the indicia is
in the form of a sublimation dye, it is notoriously well known
in the art to employ sublimation dyes to impart indicia on a
thermoset layer. Accordingly, we find that it would have been
obvious for one of ordinary skill in the art to substitute a
sublimation dye for the printing ink of Knudsen on the
protective layer. Also, while Knudsen is silent regarding the
clarity of the thermosetting protective layer, it would appear
that the protective layer exemplified at column 5, lines 27-
32, of the reference is within the scope of suitable thermoset
layers disclosed at page 6 of appellant’s specification, first
paragraph, and Knudsen does not disclose adding a colorant to
the protective layer. Moreover, we find that it would have
Appeal No. 96-3781
Application No. 08/259,891
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been obvious to one of ordinary skill in the art to select the
degree of clarity for the protective layer that suits the
desired field of application.
In conclusion, based on the foregoing, the examiner's
§ 103 rejection of claim 10 is affirmed. The examiner's § 103
and § 112 rejections of claims 1-5 are reversed.
No time period for taking any subsequent action in
connec-tion with this appeal may be extended under
37 CFR § 1.136(a).
AFFIRMED-IN-PART
EDWARD C. KIMLIN )
Administrative Patent Judge )
)
)
)
)
JOAN ELLIS ) BOARD OF PATENT
Administrative Patent Judge ) APPEALS AND
) INTERFERENCES
)
)
)
PAUL LIEBERMAN )
Administrative Patent Judge )
clm
Appeal No. 96-3781
Application No. 08/259,891
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