Ex parte OLSEN

Board of Patent Appeals and Interferences

Jan 29, 1998

08229322 (B.P.A.I. Jan. 29, 1998)

Application for patent filed April 18, 1994. According1
to appellant, this application is a division of Application
08/058,155 filed May 5, 1993, now U.S. Patent No. 5,344,705
issued September 6, 1994.
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not binding precedent of the Board.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. 14
UNITED STATES PATENT AND TRADEMARK OFFICE
__________
BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
__________
Ex parte ULF N. OLSEN
__________
Appeal No. 96-3225
Application 08/229,3221
__________
ON BRIEF
__________
Before CALVERT, ABRAMS and CRAWFORD, Administrative Patent
Judges.
ABRAMS, Administrative Patent Judge.
DECISION ON APPEAL
This is an appeal from the decision of the examiner
finally rejecting claims 16 through 29, which at that time
Appeal No. 96-3225
Application 08/229,322
2
constituted all of the claims remaining of record in the
application, claims 1 through 15 having been canceled.
Subsequent to the final rejection, an amendment was entered
which made changes to claim 16 and added new claim 30. The
examiner maintained the rejection, however, and therefore
claims 16 through 30 are before us on appeal.
The appellant's invention is directed to a method of
making a transfer sheet material that incorporates a
retroreflective graphic image. The subject matter before us
on appeal is illustrated by reference to claim 16, which
appears in an appendix to the Appeal Brief.
THE REFERENCES
The references relied upon by the examiner to support the
final rejection are:
Palmquist et al. (Palmquist) 2,543,800 Mar.
6, 1951
Bingham 3,758,192 Sep. 11,
1973
Belisle et al. (Belisle) 4,721,649 Jan.
26, 1988
PCT International Application WO 92/07990 May
14, 1992
(Danish reference)
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Application 08/229,322
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THE REJECTIONS
Claims 16 through 30 stand provisionally rejected under
the judicially created doctrine of obviousness-type double
patenting as being unpatentable over claims 1 and 38 of
copending application Serial No. 08/241,508 in view of the
Danish reference, Palmquist, Bingham and Belisle.
Claims 16 through 18, 21 through 23, 25 and 27 through 30
stand rejected under 35 U.S.C. § 103 as being unpatentable
over the Danish reference in view of Palmquist.
Claims 19, 20 and 26 stand rejected under 35 U.S.C. § 103
as being unpatentable over the Danish reference in view of
Palmquist and Bingham.
Claim 24 stands rejected under 35 U.S.C. § 103 as being
unpatentable over the Danish reference in view of Palmquist
and Belisle.
The rejections are explained in the Examiner's Answer.
The opposing viewpoints of the appellant are set forth in
the Appeal Brief.
OPINION
The Double Patenting Rejection
Appeal No. 96-3225
Application 08/229,322
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All of the claims stand provisionally rejected under the
judicially created doctrine of obviousness-type double
patenting, based upon claims 1 and 38 of copending application
Serial No. 08/241,508 in view of the Danish reference,
Palmquist, Bingham and Belisle. However, the records of the
Patent and Trademark Office indicate that this copending
application became abandoned effective January 16, 1996. Such
being the case, this rejection is rendered moot and cannot be
sustained.
The Rejections Under 35 U.S.C. § 103
The appellant’s invention is directed to a method of
making a transfer sheet material to be used for transferring
retroreflective graphic images from the sheet material to a
substrate, such as is commonly done with imprinting graphic
images upon T-shirts and the like. In accordance with the
requirements of claim 16, transparent microspheres are
embedded in a layer of material on a base sheet and then a
first “imagewise pattern” is printed upon the microspheres of
a first graphic segment of the sheet with a transparent
colorant, which is followed by the printing of a second
“imagewise pattern” on a second graphic segment of the sheet
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Application 08/229,322
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with a reflective composition. When transferred to a
substrate, this results in a color pattern that is visible in
normal conditions, such as daylight, and a reflective color
pattern visible when light is trained on the substrate, such
as by the headlights of a vehicle.
At this juncture, it should be noted that based on our
understanding of the appellant’s invention from the
specification, we interpret the phrase “imagewise pattern” to
mean a graphic representation or design which does not
completely cover the base sheet. Thus, we do not agree with
the examiner’s position that an “imagewise pattern” can be a
coating over the entire sheet.
This claim stands rejected as being unpatentable over the
Danish reference taken in view of Palmquist. The Danish
reference discloses a transfer sheet material for the same use
as that of the appellant’s invention. As we understand the
method disclosed in the Danish reference, the entire sheet of
partially embedded microspheres is coated with a reflective
composition. If a pattern is desired in the reflective
composition when transferred to the substrate, it is produced
by applying an imagewise pattern of a release agent over the
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Application 08/229,322
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coating of reflective material, prior to the application of
color. Thereafter, an imagewise pattern of color is applied
over the reflective composition. See pages 12 and 13.
This gives rise to two differences from the method
recited in claim 16. First, the claim requires that the color
be applied first and the reflective material thereafter;
however, in the Danish reference the opposite is the case.
Second, the claim also requires that the reflective material
be applied in a “second graphic segment . . . in a second
imagewise pattern,” whereas in the Danish method the
reflective material is applied in a coating over the entire
sheet.
Palmquist discloses a reflector for use as a road sign or
the like. It comprises a base layer upon which have been
deposited, seriatim, a reflective layer, a transparent color
layer, and a binder layer in which a plurality of spheres are
embedded. There is no teaching of making either the
reflective or the color layer in an “imagewise pattern.”
However, as the examiner has pointed out, the Palmquist system
manifests itself in color being visible in the daylight and
reflected color being visible under illumination by vehicle
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lights or the like, in the same manner as the appellant’s
invention.
It is incumbent upon the examiner to provide a reason why
one of ordinary skill in the art would have been led to modify
a prior art reference or to combine reference teachings to
arrive at the claimed invention (Ex parte Clapp, 227 USPQ 972,
973 (Bd. Pat. App. & Int. 1985)) and that the requisite
motivation stem from some teaching, suggestion or inference in
the prior art as a whole or from the knowledge generally
available to one of ordinary skill in the art and not from the
appellant's disclosure (see, for example, Uniroyal, Inc. v.
Rudkin-Wiley Corp., 837 F.2d 1044, 1052, 5 USPQ2d 1434, 1052
(Fed. Cir.), cert. denied, 488 U.S. 825 (1988)). In the
present case, it is the examiner’s opinion that the required
suggestion is found in the fact that Palmquist “recognizes
that the product of its method facilitates retroreflection of
colored light rays” (Answer, page 6). However, the examiner
has not articulated a reason why the artisan would have been
motivated to change the Danish method so that a product having
different operating characteristics would result. And, even
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Application 08/229,322
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if we accede to the examiner’s conclusion that the required
suggestion lies in knowing what would result from the
Palmquist method, the combination of teachings still fails to
render obvious the step of depositing the reflective material
in a “second imagewise pattern,” for such does not exist in
the methods of either reference.
It therefore is our conclusion that the combined
teachings of the Danish reference and Palmquist fail to
establish a prima facie case of obviousness with regard to the
subject matter of claim 16, and we will not sustain the
Section 103 rejection thereof. Nor, it follows, will we
sustain the rejection of claims 17, 18, 21 through 23, 25 and
27 through 30, which depend from claim 16.
Claims 19, 20 and 26 stand rejected on the basis of the
Danish reference and Palmquist, taken further in view of
Bingham, which was cited for its teaching of reflective flakes
having characteristics which fall within the scope of the
limitations added by these claims to independent claim 16.
However, Bingham fails to alleviate the deficiencies in the
basic combination of references, and therefore we also will
not sustain this rejection.
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The same rationale applies to the rejection of claim 24,
in which Belisle was added as evidence of the obviousness of
utilizing polyurethane as a transparent resin, and therefore
we will not sustain this rejection, either.
SUMMARY
None of the rejections are sustained.
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Application 08/229,322
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The decision of the examiner is reversed.
REVERSED
IAN A. CALVERT )
Administrative Patent Judge)
)
)
)
NEAL E. ABRAMS ) BOARD OF
PATENT
Administrative Patent Judge) APPEALS AND
) INTERFERENCES
)
)
MURRIEL E. CRAWFORD )
Administrative Patent Judge)
Appeal No. 96-3225
Application 08/229,322
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St. Paul, MN 55133-3427