Ex parte Sammis

Board of Patent Appeals and Interferences

Mar 14, 2000

08421025 (B.P.A.I. Mar. 14, 2000)

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for publication in a law journal and (2) is not binding precedent of the Board.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. 23
UNITED STATES PATENT AND TRADEMARK OFFICE
____________
BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
____________
Ex parte GEORGE L. SAMMIS
____________
Appeal No. 1997-1423
Application No. 08/421,025
____________
HEARD: February 24, 2000
____________
Before WINTERS, JOHN D. SMITH, and OWENS, Administrative
Patent Judges.
JOHN D. SMITH, Administrative Patent Judge.
DECISION ON APPEAL
This is an appeal pursuant to 35 U.S.C. § 134 from the
final rejection of claims 8-22.
Claim 8 is representative and is reproduced below:
8. A method for fabricating a personally colored decal
for transfer from a transfer sheet (10) onto a section of
fabric clothing (20), said method comprising the steps of:
providing a paper sheet (12) treated with a release
agent layer disposed thereover;
Appeal No. 1997-1423
Application No. 08/421,025
2
applying a transparent layer (16) of fluidic thermo-
plastic transfer material directly onto the release agent on
the paper sheet (12) for establishing a discrete area of
transfer material on the paper sheet (12) devoid of inks or
other opaque agents and suitable for coloring by a consumer,
the transfer layer (16) being adapted to bond to the release
agent in ambient conditions and release therefrom in response
to a predetermined elevated temperature;
solidifying the transfer layer (16);
disposing a plurality of non-water soluble adhesive-
abrasive particles (18) on the transparent layer (16) for
providing a rough surface for abrading crayon (22) rubbed
thereover;
applying heat to the adhesive-abrasive particles
(18) above the melting temperature of the adhesive-abrasive
particles (18); and
characterized by melting the non-water soluble
adhesive-abrasive particles (18) to form an adhesive (18).
The references of record relied upon by the examiner are :
Reed et al. (Reed) 4,294,641 Oct. 13,
1981
Hare 4,980,224 Dec.
25, 1990
The appealed claims stand rejected under 35 U.S.C. § 103
as unpatentable over Hare in view of Reed.
We cannot sustain this rejection.
The subject matter on appeal is directed to a method of
fabricating a decal for transfer onto a section of fabric,
such as a t-shirt, that may be personally colored.
Appeal No. 1997-1423
Application No. 08/421,025
3
Specifically, in the claimed method, a transparent transfer
layer of thermoplastic material is applied and solidified on a
release layer disposed on a paper sheet. Thereafter, a
plurality of non-water soluble adhesive-abrasive particles are
disposed in the transfer layer for providing a rough surface
such that a crayon rubbed over the surface is abraded to form
a crayon coated surface on the transfer sheet. When the decal
is transferred onto a fabric, the adhesive-abrasive particles
are heated above their melting point to render the particles
adhesive so that a bond is formed with the fabric. As
described in his specification at page 8, lines 27-29, the
adhesive-abrasive particles form “[a]n extremely strong
mechanical adhesive bond when melted into the fibers of a
section of fabric” which “[g]reatly improves the wear
characteristics of the transfer sheet...”.
The examiner’s conclusion that the herein claimed process
would have been obvious to a person of ordinary skill in the
art is necessarily predicated on his factual determination
that certain particulate particles described in the Reed
patent are inherently water-insoluble “adhesive-abrasive”
particles as claimed by appellants. Thus, in his answer at
Appeal No. 1997-1423
Application No. 08/421,025
4
page 7, the examiner contends that the polyester particles
employed in Reed’s transfer process “[w]ill inherently exhibit
the same physical properties (‘adhesive-abrasive’) of the
polyester particles used in the present invention (emphasis
added)”. To support this argument, the examiner observes that
appellants’ “adhesive-abrasive” particles may be polyester
particles as described in the specification at page 8, line
22. On the other hand, appellant argues that the Reed
particles are neither adhesives nor abrasives as required by
the language of their claims. See the brief at page 5 and the
Sammis declaration at page 2. For the reasons below, we agree
with appellant that the examiner has failed to meet his burden
of establishing as a factual matter that the Reed particles
are inherently “adhesive-abrasive” particles as claimed by
appellant.
Reed discloses a heat transfer sheet (used for the
application of designs to textiles) which comprises a flexible
carrier sheet or web bearing a transfer layer of a polymer
composition which is rendered non-blocking at normal
temperatures by a particulate solid dispersed therein. Reed’s
solid particles are so selected that at the melting
Appeal No. 1997-1423
Application No. 08/421,025
5
temperature of the transfer layer they are either removed by
sublimation or converted to a form “which does not interfere
with the transfer of the design to the textile.” See the Reed
abstract. Reed does disclose that particulate polyesters may
be used as non-blocking particles in the transfer sheet, but
further specifies that such polyesters are low molecular
weight linear polyesters which, when melted, form a phase
separate from the polymeric transfer layer. See Reed at
column 5, lines 7-11. Although appellant describes the use of
a polyester as the source of his “adhesive-abrasive” particles
as a preferred embodiment of his invention, appellant
identifies the particulate polyester for the claimed invention
as ground polyester which is “commonly used in the textile
industry to adhere sections of fabric together”. See the
specification at page 8, lines 22-24. Moreover, appellant
defines his “abrasive-adhesive” particles as forming “an
extremely strong mechanical adhesive bond when melted into the
fibers of a section of fabric” (specification at page 8, lines
27-29), not a separate phase which “does not interfere” with
the transfer of Reed’s design to the fabric. Accordingly,
Appeal No. 1997-1423
Application No. 08/421,025
See Reed at column 7, lines 16-21.1
6
there is no express indication in Reed that these prior art
polyester particles possess any adhesive properties.
Here, we further observe that because there is a paucity
of detailed and specific disclosures regarding the low
molecular weight linear polyester particles of Reed, a
comparative factual analysis between the claimed “adhesive-
abrasive” particle components and the Reed particles, such as
made in In re Spada, 911 F.2d 705, 708, 15 USPQ2d 1655, 1658
(Fed. Cir. 1990), cannot be undertaken. Inherency is a
question of fact and cannot be established by probabilities or
possibilities. In re Oelrich, 666 F.2d 578, 581, 212 USPQ
323, 326 (CCPA 1981). While it may be possible that the low
molecular weight linear polyester particles of Reed possess
some degree of adhesiveness when melted, that “possibility” is
not sufficient to establish a prima facie case that such
particles are “adhesive-abrasive” particles within the meaning
of the claim language in question. Accordingly, even if we
agreed with the examiner that a person of ordinary skill in
this art would have been motivated by Reed’s disclosure (that1
Appeal No. 1997-1423
Application No. 08/421,025
7
his solid particles form a fine matt surface which functions
to improve the printability, drawing and typing properties of
the transfer layer) to use Reed’s particles in place of the
abrasive particles in Hare’s transfer sheet, the combined
teachings of the references fail to suggest all the
limitations of the appealed claims. Thus, the subject matter
“as a whole” defined by the appealed claims would not have
been obvious at the time appellant’s invention was made. 35
U.S.C.
§ 103.
The decision of the examiner is reversed.

REVERSED
SHERMAN D. WINTERS )
Administrative Patent Judge )
)
Appeal No. 1997-1423
Application No. 08/421,025
8
)
)
) BOARD OF PATENT
JOHN D. SMITH ) APPEALS
Administrative Patent Judge ) AND
) INTERFERENCES
)
)
)
TERRY J. OWENS )
Administrative Patent Judge )
lp
Appeal No. 1997-1423
Application No. 08/421,025
9
HOWARD AND HOWARD
THE PINEHURST OFFICE CENTER
1400 NORTH WOODWARD AVENUE SUITE 101
BLOOMFIELD HILLS MI 48304-2856
Leticia
Appeal No. 1997-1423
Application No. 08/421,025
APJ JOHN D. SMITH
APJ OWENS
APJ WINTERS
DECISION: REVERSED
Send Reference(s): Yes No
or Translation (s)
Panel Change: Yes No
Index Sheet-2901 Rejection(s):
Prepared: December 20, 2000
Draft Final
3 MEM. CONF. Y N
OB/HD GAU
PALM / ACTS 2 / BOOK
DISK (FOIA)/ REPORT