Ex parte Sammis

Board of Patent Appeals and Interferences

Mar 14, 2000

08452125 (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for publication in a law journal and (2) is not binding precedent of the Board.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. 22
UNITED STATES PATENT AND TRADEMARK OFFICE
____________
BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
____________
Ex parte GEORGE L. SAMMIS
____________
Appeal No. 1997-4439
Application No. 08/452,125
____________
ON BRIEF
____________
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 8-14 and 18-20.
Claim 8 is representative and is reproduced below:
8. A method for fabricating a transfer sheet (10) for
transferring a temperature responsive decal having personally
applied crayon coloring (22) onto a section of fabric clothing
(20), said method comprising the steps of:
Appeal No. 1997-4439
Application No. 08/452,125
2
providing a paper sheet (12) treated with a release
agent layer disposed thereof;
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) 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);
and characterized by partially embedding a plurality
of plastic adhesive-abrasive particles (18) on the transparent
transfer layer (16) for providing a rough surface sufficiently
rough for abrading crayon (22) rubbed thereover and for
melting in response to heat to form an adhesive for enhancing
the bond between the transfer material (16) and the fabric
(20) to securely trap the abraded crayon therebetween.
The references of record relied upon by the examiner are
:
Hare 4,980,224 Dec. 25,
1990
Reed et al. (Reed) 4,294,641 Oct. 13, 1981
Appealed claims 8-10, 14, 18, and 20 stand rejected under
35 U.S.C. § 102 as anticipated by Reed. Appealed claim 19
stands rejected under 35 U.S.C. § 103 as obvious over Reed.
Appealed claims 11-13 stand rejected under 35 U.S.C. § 103 as
unpatentable over Reed in view of Hare.
We cannot sustain these rejections.
Appeal No. 1997-4439
Application No. 08/452,125
3
The subject matter on appeal is directed to a method for
fabricating a transfer sheet for transferring a thermally
responsive decal onto a section of fabric, such as a t-shirt.
Significantly, the decal is modified so that it may be
personally colored by an applied crayon. 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 plastic
adhesive-abrasive particles are embedded 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 melt in response to heat which
renders the particles adhesive so that an enhanced bond is
formed between the decal and the fabric to securely trap the
abraded crayon therebetween. 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...”.
Appeal No. 1997-4439
Application No. 08/452,125
4
The examiner’s finding that appealed claims 8-10, 14, 18,
and 20 are anticipated by Reed is necessarily predicated on
his factual determination that certain particulate particles
described in the Reed patent are inherently “adhesive-
abrasive” particles as claimed by appellants. See page 2 of
Paper No. 8 and page 3 of paper No. 11 wherein the examiner’s
statements imply that Reed’s plasticizer particles which are
composed of low molecular weight polymers such as linear
polyesters, polyamides and polyethylene are necessarily
“adhesive-abrasive” particles as claimed apparently in part
because appellants’ “adhesive-abrasive” particles may also be
composed of polyester or nylon (polyamide) 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, lines 19 and 20 and
the Sammis declaration at page 2. For the reasons below, we
find 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.
Appeal No. 1997-4439
Application No. 08/452,125
5
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
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,
polyamides, and polyethylene may be used as non-blocking
particles in the transfer sheet, but further specifies that
such polymers are low molecular weight polymers 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 polyester and nylon as sources of his
“adhesive-abrasive” particles as a preferred embodiment of his
invention, appellant identifies these particulate materials as
ground polyester and nylon which are “commonly used in the
textile industry to adhere sections of fabric together”. See
the specification at page 8, lines 22-24. Moreover, appellant
Appeal No. 1997-4439
Application No. 08/452,125
6
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 a design to a fabric as in Reed. Accordingly,
there is no express indication in the Reed disclosure that the
described low molecular polymer plasticizer particles possess
any adhesive properties.
Here, we further observe that because of a paucity of
detailed and specific disclosures regarding the low molecular
weight polymeric 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
polymeric 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
Appeal No. 1997-4439
Application No. 08/452,125
7
“adhesive-abrasive” particles within the meaning of the claim
language in question. Accordingly, even if we agreed with the
examiner that Reed’s disclosure at column 7, lines 16-20 that
his solid particles form a fine matt surface which functions
to improve the printability, drawing and typing properties of
the transfer layer establishes that Reed’s particles
inherently possess a sufficiently rough surface for abrading
crayon as called for in the appealed claims, we still cannot
agree with the examiner that Reed anticipates the rejected
claims. Accordingly, we cannot sustain the rejection of
appealed claims 8-10, 14, 18, and 20. Since the examiner’s
obviousness rejections of appealed claims 19 and 11-13 are
deficient for the same reason, these rejections cannot be
sustained.
The decision of the examiner is reversed.
REVERSED
SHERMAN D. WINTERS )
Appeal No. 1997-4439
Application No. 08/452,125
8
Administrative Patent Judge )
)
)
)
) BOARD OF PATENT
JOHN D. SMITH ) APPEALS
Administrative Patent Judge ) AND
) INTERFERENCES
)
)
)
TERRY J. OWENS )
Administrative Patent Judge )
lp
Appeal No. 1997-4439
Application No. 08/452,125
9
HOWARD & HOWARD
THE PINHURST OFFICE CENTER
1400 N WOODWARD AVENUE
SUITE 101
BLOOMFIELD HILLS MI 48304-2856
Leticia
Appeal No. 1997-4439
Application No. 08/452,125
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: October 30, 2000
Draft Final
3 MEM. CONF. Y N
OB/HD GAU
PALM / ACTS 2 / BOOK
DISK (FOIA) / REPORT