Ex parte PONTUTI et al.

Board of Patent Appeals and Interferences

Oct 28, 1998

08099220 (B.P.A.I. Oct. 28, 1998)

Application for patent filed July 29, 1993. According1
to appellants, the application is a division of Application
07/688,648, filed April 19, 1991, now U.S. Patent No.
5,260,113, issued November 9, 1993.
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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journal and (2) is not binding precedent of the Board.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 JAMES A. PONTUTI, ROBERT W. WARNER,
RICHARD F. THEISSEN and JOHN A. NIELSEN
________________
Appeal No. 96-0353
Application 08/099,2201
________________
ON BRIEF
________________
Before ELLIS, OWENS and WALTZ, Administrative Patent Judges.
OWENS, Administrative Patent Judge.
DECISION ON APPEAL
This is an appeal from the examiner’s final rejection of
claims 7-13, which are all of the claims remaining in the
Appeal No. 96-0353
Application 08/099,220
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application.
THE INVENTION
Appellants’ claimed invention is directed toward a method
for joining at least two translucent sign face substrates by
use of a seam tape which contains a scrim embedded in
thermoplastic material, wherein the seam tape is applied to
adjoining regions of the substrates by use of heat and
sufficient pressure to wet out the fibers of the seam scrim,
i.e., to cause the thermoplastic material to flow around and
intimately wet and encapsulate the fibers (specification, page
4, lines 17-24). Claim 7 is illustrative and reads as
follows:
7. A method of joining at least two translucent sign
face substrates with a seam tape to form a seam having a
transmissive optical density within ±50% of the transmissive
optical density of the sign face substrate when the sign face
is illuminated from behind the sign face substrate, said
method comprising the steps of:
(a) providing at least two sheets of sign face material,
such that each sheet comprises a composite of two layers of a
thermoplastic material and a scrim layer sandwiched between
the two layers of thermoplastic material;
(b) aligning said two sheets such that an edge of each
sheet is in an adjoining position and defines an adjoining
region without any gaps between the adjoining sheets of sign
face material;
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Application 08/099,220
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(c) positioning a seam tape in said adjoining region
such that a portion of said tape simultaneously overlays and
contacts each sheet within the adjoining region and extends
substantially the length of the adjoining region, said tape
comprising a seam scrim substantially embedded in a seam
thermoplastic material having an index of refraction similar
to the scrim of the seam tape, said seam scrim capable of
being substantially wetted out by said seam thermoplastic
material;
(d) heating said adjoining region to a temperature which
exceeds the melting temperature of said seam thermoplastic
material;
(e) exerting sufficient pressure to said heated region
to substantially wet out said seam scrim; and
(f) allowing said adjoining region to cool.
THE REFERENCES
Griffith 3,734,795 May 22,
1973
Stilling 4,682,433 Jul. 28,
1987
THE REJECTION
Claims 7-13 stand rejected under 35 U.S.C. § 103 as being
unpatentable over Griffith in view of Stilling.
OPINION
We have carefully considered all of the arguments
advanced by appellants and the examiner and agree with
appellants that the aforementioned rejection is not well
Appeal No. 96-0353
Application 08/099,220
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founded. Accordingly, this rejection will be reversed.
Griffith discloses, inter alia, a method for joining the
ends of a fabric belt made of woven polymeric plastic strands
or strands coated with polymeric plastic material to form an
endless machine belt, such as a drainage belt for a paper-
making machine (col. 1, lines 25-31; col. 5, lines 9-11). A
current-conducting wire, which may be coated with polymeric
plastic material, is formed into inner and outer loops,
wherein the inner loops are embedded within a strip of woven
material which has warp and weft strands which contain
polymeric plastic material (col. 3, lines 71-74; col. 4, lines
19-25; col. 5, lines 12-20). The strip is interposed between
the ends of the belt such that the outer loops overlap with
the ends of the belt (col. 5, lines 22-25). A current is
impressed upon the wire to soften the polymeric plastic
material while pressure is exerted against the loops so as to
embed the loops in the softened polymeric plastic material,
thereby forming an endless belt (col. 5, lines 26-30; Fig. 7).
Stilling discloses a vinyl fabric sign wherein the vinyl
fabric comprises a woven, non-elastic, polyester fiber
material coated with vinyl plastic (col. 3, lines 5-12).
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Appellants argue that the examiner has identified no
motivation in the references which would lead one of ordinary
skill in the art to prepare optically translucent seams by use
of a process wherein fine current-conducting wire is embedded
in polymeric plastic material (brief, page 8).
The examiner argues that arriving at appellants’ claimed
method from the teachings of Griffith and Stilling merely
involves substituting one plastic-coated fabric material for
another (answer, pages 4-5). The seam so produced, the
examiner argues (answer, page 5), would have the
characteristic of appellants’ seam of being minimally visible,
i.e., being not optically objectionable to the naked eye at
normal viewing distance (specification, page 4, lines 12-15),
in spite of the presence of the conductive wire.
The examiner has not pointed out, and we do not
independently find, any teaching in the evidence relied upon
by the examiner which indicates that one of ordinary skill in
the art would have considered a seam containing a conductive
wire to be suitable for use in a sign as recited in
appellants’ claim 7. In order for a prima facie case of
obviousness to be established, the teachings from the prior
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art itself must appear to have suggested the claimed subject
matter to one of ordinary skill in the art. See In re
Rinehart, 531 F.2d 1048, 1051, 189 USPQ 143, 147 (CCPA 1976).
The mere fact that the prior art could be modified as proposed
by the examiner is not sufficient to establish a prima facie
case of obviousness. See In re Fritsch, 972 F.2d 1260, 1266,
23 USPQ2d 1780, 1783 (Fed. Cir. 1992).
Because the motivation relied upon by the examiner comes
solely from appellant’s specification, the examiner used
impermissible hindsight when rejecting the claims. See W.L.
Gore & Associates v. Garlock, Inc., 721 F.2d 1540, 1553, 220
USPQ 303, 312-13 (Fed. Cir. 1983); In re Rothermel, 276 F.2d
393, 396, 125 USPQ 328, 331 (CCPA 1960). We therefore do not
sustain the examiner’s rejection.
DECISION
The rejection of claims 7-13 under 35 U.S.C. § 103 over
Griffith in view of Stilling is reversed.
REVERSED
Appeal No. 96-0353
Application 08/099,220
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JOAN ELLIS )
Administrative Patent Judge )
)
)
)
TERRY J. OWENS ) BOARD OF
PATENT
Administrative Patent Judge ) APPEALS AND
) INTERFERENCES
)
)
THOMAS A. WALTZ )
Administrative Patent Judge )
Appeal No. 96-0353
Application 08/099,220
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Carolyn V. Peters
3M Office of Intellectual Prop. Counsel
P.O. Box 33427
St. Paul, MN 55133-3427
TJO/ki