Ex Parte Pace et al

Patent Trials and Appeals Board

Jan 9, 2019

14991835 - (D) (P.T.A.B. Jan. 9, 2019)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE
14/991,835 01/08/2016
26231 7590 01/11/2019
FISH & RICHARDSON P.C. (DA)
P.O. BOX 1022
MINNEAPOLIS, MN 55440-1022
UNITED ST A TES OF AMERICA
FIRST NAMED INVENTOR
Edmund L. Pace
UNITED STATES DEPARTMENT OF COMMERCE
United States Patent and Trademark Office
Address: COMMISSIONER FOR PATENTS
P.O. Box 1450
Alexandria, Virginia 22313-1450
www .uspto.gov
ATTORNEY DOCKET NO. CONFIRMATION NO.
39798-0128004 5502
EXAMINER
NGUYEN, QUANG X.L.
ART UNIT PAPER NUMBER
2854
NOTIFICATION DATE DELIVERY MODE
01/11/2019 ELECTRONIC
Please find below and/or attached an Office communication concerning this application or proceeding.
The time period for reply, if any, is set in the attached communication.
Notice of the Office communication was sent electronically on above-indicated "Notification Date" to the
following e-mail address(es):
P ATDOCTC@fr.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte EDMUND L. PACE and
GREGORYS.BRAXTON
Appeal 2018-002481
Application 14/991,835
Technology Center 2800
Before CATHERINE Q. TIMM, JEFFREY T. SMITH, and
MICHAEL G. McMANUS, Administrative Patent Judges.
TIMM, Administrative Patent Judge.
DECISION ON APPEAL 1
STATEMENT OF THE CASE
Pursuant to 35 U.S.C. § 134(a), Appellant2 appeals from the
Examiner's decision to reject claims 23-36 and 43 under 35 U.S.C. § 112 ,r 2
and claims 23-37 and 39-43 under 35 U.S.C. § 103(a) as obvious over
1 In explaining our Decision, we cite to the Specification of January 11, 2016
("Spec."), Final Office Action of September 23, 2016 ("Final"), Appeal
Brief of June 22, 2017 ("Appeal Br."), Examiner's Answer of November 1,
2017 ("Ans."), and Reply Brief of December 29, 2017 ("Reply Br.").
2 Appellant is the applicant, HBI Branded Apparel Enterprises, LLC, which,
according to the Brief, is the real party in interest. Appeal Br. 2.
Appeal 2018-002481
Application 14/991,83 5
Robertson3 in view ofNanno4 and Gajjar5. We have jurisdiction under
35 U.S.C. § 6(b).
We AFFIRM-IN-PART.
The claims are directed to a method for pad printing a pattern on a
textile substrate. See, e.g., claims 23, 37. Claim 37 is illustrative:
3 7. A method of printing a pattern on a textile substrate,
the method comprising:
positioning a textile substrate on a printing area of a pad
printing machine, the textile substrate having an inner surface
and an outer surface opposite the inner surface;
transferring a pattern from a cliche of the pad printing
machine to a printing pad of the pad printing machine, the
pattern formed from a composition comprising an ink, a
solvent, and a hardener, and the pattern having a depth less than
a thickness of the textile substrate between the
inner surface and the outer surface; and
applying, with the printing pad, the pattern to one of the
inner surface or the outer surface of the textile substrate
positioned on the printing area, wherein the pattern comprising
the composition penetrates the inner surface or the outer surface
of the textile substrate to a depth less than the thickness of the
textile substrate, wherein the pattern is substantially not visible
from the other surface of the inner surf ace or the outer surface.
Appeal Br. 17 (claims appendix).
3 Robertson et al., US 6,516,716 Bl, issued Feb. 11, 2003.
4 Nanno, JP 05345874 A, published Dec. 27, 1993.
5 Gajjar, US 3,343,241, issued Sept. 26, 1967.
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Appeal 2018-002481
Application 14/991,83 5
The other independent claim, claim 23, further requires the pattern
comprise product label information that forms a tagless product label on the
textile. Appeal Br. 15 ( claims appendix). Claim 23 also requires that the
printed pattern be "readable following at least fifty launderings." Id.
OPINION
Indefiniteness
The Examiner determines that claims 23-36 and 43 are indefinite for
two reasons. First, the Examiner determines the limitation in claim 23
reciting "the transferred pattern being printed on the textile substrate such
that the pattern is readable following at least fifty launderings" is unclear
because "the limitation does not clearly convey what is entailed in each
laundering process." Final 4. Second, the Examiner determines claim 43 is
indefinite because it depends from claim 1, a canceled claim. Id.
Claim 23
Turning first to the "fifty launderings" language of claim 23, we agree
with Appellant that the ordinary artisan would understand the meaning of
this language when it is read in the context of the Specification.
The Specification discloses that the "present invention relates to the
field of apparel, and, more particularly to apparel having tagless labels or
other patterns pad printed thereon." Spec. 1: 10-11. The Specification
discloses problems with prior art labeled garments. Namely, that garments
with adhesively affixed labels cannot be laundered and that transfer-printed
garment labels cannot withstand repeated laundering and wear off after only
a few home washings. Spec. 1 :21-23, 2:4--5. Appellant's improvement is
in the use of pad printing to apply the label indicia which, according to the
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Appeal 2018-002481
Application 14/991,83 5
Specification, results in a product label that "has a high durability to
repeated launderings" and that "will readily withstand more than 50 home
launderings without any appreciable fading." Spec. 6: 16-20.
"[T]he definiteness of the language employed must be analyzed-not
in a vacuum, but always in light of the teachings of the prior art and of the
particular application disclosure as it would be interpreted by one possessing
the ordinary level of skill in the pertinent art." In re Moore, 439 F.2d 1232,
1235 (CCPA 1971). Given that the pattern is to be used as a product label
on a garment, and garments are normally washed either by hand or washing
machine, it follows that the ordinary artisan would understand "laundering"
to mean conventional hand or machine washing in which the garment is
fully immersed in detergent-containing water for an amount of time
sufficient to clean the garment.
Claim 43
Appellant does not address the Examiner's determination that claim
43 is indefinite for depending from canceled claim 1. We summarily sustain
the rejection of claim 43 under 35 U.S.C. § 112 ,r 2.
Obviousness
Turning to the Examiner's rejection of claims 23-37 and 39--43 as
obvious over Robertson in view ofNanno and Gajjar, we agree with
Appellant that the evidence fails to support the Examiner's combination of
Robertson and Nanno and that the rejection is based on improper hindsight.
Final 5-6, 8-9; Appeal Br. 8-9; Reply Br. 4.
Robertson discloses a method of pad printing, but fails to disclose the
types of products that were known to be pad printed. Robertson merely
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Appeal 2018-002481
Application 14/991,83 5
refers to products generically without identifying the nature of the products.
Robertson col. 1, 11. 19-30, col. 3, 11. 13-16.
Nanno discloses a radiation curable ink composition containing metal-
powder that has improved storage stability and color tone and
photoluminescence stability after printing. Nanno ,r,r 1, 11. After describing
the composition of the ink, Nanno states that the composition can be used in
a variety of printing methods and further that the substrate to be printed is
not particularly limited. Specifically, Nanno discloses:
As a printing method, offset printing is preferable, in addition
lithography, Toppan Printing, screen printing, pad printing, etc. are
adopted. A printing object thing does not have the limitation in
particular including paper, plastics, metal, a wood slab, glass, and
textiles. Not only pattern printing but an overall print is possible.
After printing irradiates active energy lines, such as ultraviolet rays
and an electron beam, and attains hardening.
Nanno ,r 25. Nanno's disclosure is general. It only states that pad printing is
one of a number of printing processes in which the ink can be used and that
the ink may be printed on any substrate, one of which may be textile. Which
of the methods the ordinary artisan would know to select to print on textile
substrates is not conveyed. The ordinary artisan may, for example, select
screen printing to print on textiles. Nanno does not convey that the ordinary
artisan would have known that pad printing could be used to print textiles.
Appellant's Specification provides some evidence that those of
ordinary skill in the art would not have selected pad printing to print textiles.
According to the Specification, "[p ]ad printing was developed for printing
on irregular shaped solid objects such as golf balls, coffee mugs, and the
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Appeal 2018-002481
Application 14/991,83 5
like. Thus, pad printing has not heretofore been known for printing patterns
on permeable textile substrates." Spec. 2: 10-13.
Given the disclosure in the Specification, the Examiner had to provide
evidence that pad printing was known to be used to print patterns on textile
substrates. Nanno's disclosure fails to provide the requisite disclosure.
Thus, we agree with Appellant that the evidence fails to support the
Examiner's combination of Robertson and Nanno and that the rejection is
based on improper hindsight.
In summary:
23-36, 43
23-37, 39-43 § 103(a)
Summar
CONCLUSION
Robertson,
Nanno, Ga··ar
DECISION
43
43
The Examiner's decision is affirmed-in-part.
TIME PERIOD FOR RESPONSE
23-36
23-37, 39-43
23-37, 39-42
No time period for taking any subsequent action in connection with
this appeal maybe extended under 37 C.F.R. § 1.136(a)(l).
AFFIRMED-IN-PART
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