Ex parte MAHN et al.

Board of Patent Appeals and Interferences

Oct 25, 2000

08374960 (B.P.A.I. Oct. 25, 2000)

1
The opinion in support of the decision being entered today
was not written for publication is not binding precedent of
the Board.
Paper No. 14
UNITED STATES PATENT AND TRADEMARK OFFICE
__________
BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
__________
Ex parte JOHN E. MAHN, SR.
and JOHN E. MANN, JR.
__________
Appeal No. 1997-3266
Application 08/374,960
___________
ON BRIEF
___________
Before WILLIAM F. SMITH, PAK and OWENS, Administrative Patent
Judges.
OWENS, Administrative Patent Judge.
DECISION ON APPEAL
This is an appeal from the examiner’s final rejection of
claims 10 and 12, and refusal to allow claims 13 and 14 as
amended after final rejection. Claim 11, which is the only
other claim remaining in the application, stands withdrawn
from consideration by the examiner as being directed toward a
nonelected invention.
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THE INVENTION
Appellants’ claimed invention is directed toward a method
for applying indicia to a cloth substrate. Claim 10 is
illustrative:
10. The method of applying indicia to a cloth substrate
comprising placing a heat activated transfer onto said cloth
substrate, said heat activated transfer comprising a heat
activated adhesive layer and a clear upper thermoset layer,
wherein said heat activated adhesive layer is placed in
contact with said cloth layer, placing a transfer sheet onto
said heat activated transfer, said transfer sheet comprising a
carrier and a sublimation dye forming indicia with said
sublimation dye in contact with said thermoset layer of said
heat activated transfer;
applying heat and pressure against said transfer sheet
and said heat activated transfer and said cloth to cause said
adhesive to melt and bond to said cloth and to cause said
sublimation dye to sublime and transfer to said thermoset
layer.
THE REFERENCES
Mahn, Sr. et al. (Mahn) 4,610,904 Sep. 9,
1986
Borresen 4,692,198 Sep. 8,
1987
Yamane 5,350,474 Sep. 27,
1994
(effective filing date Apr. 8,
1991)
THE REJECTIONS
The claims stand rejected under 35 U.S.C. § 103 as
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follows: claim 10 over Borresen in view of Yamane, and claims
12-14 over Borresen in view of Yamane and Mahn.
OPINION
We have carefully considered all of the arguments
advanced by appellants and the examiner and agree with
appellants that the aforementioned rejections are not well
founded. Accordingly, we reverse these rejections.
Borresen discloses a method for printing a pattern onto a
surface receptive to sublimation dye (col. 1, lines 6-7). A
laminate is formed having, in order, an auxiliary carrier, an
adhesive, a carrier foil, and sublimation dye (col. 2, lines
48-65). Characters then are formed by cutting or punching
material out of the sublimation dye and carrier foil layers,
thereby exposing the adhesive at the cut away portions (col.
3, line 23 - col. 4, line 6). The laminate is fixed to a
surface
by hot pressing (col. 4, lines 9-11).
In the examiner’s view, Borresen’s laminate having the
formed characters meets the requirements of appellants’
transfer sheet comprising a carrier and sublimation dye
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Application 08/374,960

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indicia (answer, page 3). Regarding appellants’ heat
activated transfer, the examiner argues that column 2, lines
9-39 of Borresen disclose a thermoset layer placed onto a
cloth substrate (answer, pages 3 and 6). This portion of the
reference discloses, as examples of suitable substrate
materials, textiles, thermoplastic materials, thermosetting
materials, and lacquered aluminum sheets, and teaches that
“[e]ven the objects to be decorated may be made of the above-
mentioned plastics materials or may be provided with coatings
of such materials, e.g., by lacquering” (col. 2, lines 24-26).
This quoted portion, the examiner argues, is a teaching that
the substrate can be a textile coated with a thermosetting
material (answer, page 3). The examiner, however, does not
explain why the reference reasonably would have led one of
ordinary skill in the art to this particular combination.
Even if Borresen is considered to have suggested, as a
substrate, a textile coated with a thermoset material, the
reference does not disclose a heat activatable adhesive
between the thermoset material and the textile. For a
suggestion of this claim requirement the examiner relies upon
Yamane (answer, page 4). Yamane discloses forming a laminate
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having, in order, a substrate, a release layer, a hot melt
adhesive layer, and ink characters, and discloses hot pressing
this laminate onto a textile material and then removing the
release layer and substrate to produce a textile having ink
characters covered by hot melt adhesive (col. 7, lines 18-61).
The examiner has not established that Borresen’s teaching
of forming a coating, such as a lacquer, would have fairly
suggested, to one of ordinary skill in the art, using a hot
melt adhesive to fasten a thermoset layer to a textile
surface. Moreover, even if such a suggestion were provided,
the relied-upon portion of Yamane does not disclose fastening
such layers. Instead, it discloses forming a layer of hot
melt adhesive on a surface. Thus, even if the references were
combined as proposed by the examiner, the claimed invention
would not be produced.
The examiner argues (answer, page 7):
Yamane was cited for its limited teaching of heat-
transferring a plastic layer onto a cloth substrate.
Those skilled in this art would have recognized that
the thermosettable layer taught by Borrseen could be
applied to the textile layer by a conventional heat
transfer process, as taught by Yamane. While Yamane
describes transferring an indicia-bearing plastic
layer, as Appellants note, Borresen teaches a
separate step of transferring a sublimation dye into
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the thermoset layer, as is now claimed.
This argument is deficient in that it does not explain why the
prior art itself would have led one of ordinary skill in the
art to combine the teachings of the references as proposed by
the examiner. See In re Rinehart, 531 F.2d 1048, 1051, 189
USPQ 143, 147 (CCPA 1976). Particularly, the examiner has not
explained the basis in the prior art for the above-quoted
“[t]hose skilled in the art would have recognized . . .”
argument. The record indicates that rather than coming from
the prior art, the teaching relied upon by the examiner for
using a hot melt adhesive to attach a thermoset layer to a
cloth layer comes from appellants’ disclosure of their
invention in the specification. The record, therefore,
indicates that examiner’s rejection is based upon
impermissible hindsight. 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).
Consequently, we reverse the rejection of claim 10.
The Mahn reference is not relied upon by the examiner for
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any teaching which would remedy the above-discussed
deficiencies in the disclosures of Borresen and Yamane.
Accordingly, we reverse the rejection of claims 12-14.
DECISION
The rejections under 35 U.S.C. § 103 of claim 10 over
Borresen in view of Yamane, and claims 12-14 over Borresen in
view of Yamane and Mahn, are reversed.
REVERSED
)
WILLIAM F. SMITH )
Administrative Patent Judge )
)
)
) BOARD OF PATENT
CHUNG K. PAK )
Administrative Patent Judge ) APPEALS AND
)
) INTERFERENCES
)
TERRY J. OWENS )
Administrative Patent Judge )
Appeal No. 1997-3266
Application 08/374,960

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GREGORY J. LUNN
WOOD, HERRON AND EVANS
2700 CAREW TOWER
CINCINNATI, OH 45202
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