Ex Parte Shemanski et al

Board of Patent Appeals and Interferences

Sep 5, 2012

11121749 (B.P.A.I. Sep. 5, 2012)

UNITED STATES PATENT AND TRADEMARKOFFICE
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
APPLICATION NO. FILING DATE FIRST NAMED INVENTOR ATTORNEY DOCKET NO. CONFIRMATION NO.
11/121,749 05/03/2005 Paula Shemanski SHEMANSKI-PA-1 4125
7590 09/05/2012
OBER/KALER
c/o Royal W. Craig
120 East Baltimore Street
Baltimore, MD 21202
EXAMINER
CAILLOUET, CHRISTOPHER C
ART UNIT PAPER NUMBER
1745
MAIL DATE DELIVERY MODE
09/05/2012 PAPER
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.
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
____________

BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
____________

Ex parte PAULA SHEMANSKI and WILLIAM BENSEL

____________

Appeal 2011-006483
Application 11/121,749
Technology Center 1700
____________

Before ROMULO H. DELMENDO, MARK NAGUMO, and
GEORGE C. BEST, Administrative Patent Judges.

DELMENDO, Administrative Patent Judge.

DECISION ON APPEAL
Appeal 2011-006483
Application 11/121,749

2
Paula Shemanski and William Bensel, the Appellants,1 seek our
review under 35 U.S.C. § 134(a) of a final rejection of claims 4-6.2 We have
jurisdiction under 35 U.S.C. § 6(b).
We AFFIRM.

STATEMENT OF THE CASE
The invention relates to a method for providing thermal appliqué text
by direct thermal application of the indicia onto a garment. Specification
(“Spec.”) 1, ll. 6-11. See also claim 4, which is reproduced as follows:
4. A method for providing thermal appliqué text,
comprising:
a first step of applying a thermally activated coating to
one side of a fabric substrate;
a second step of temporarily bonding another side of said
fabric substrate to one side of a carrier using a temporary
pressure-sensitive adhesive;
a third step of kiss-cutting the fabric substrate on said
carrier in a predetermined pattern comprising predetermined
grouping of discrete text letters or numbers in a reverse image
format without cutting said carrier;
a fourth step of cutting through both said fabric substrate
and carrier around all of said discrete text letters or numbers in
an outline cut to separate said predetermined grouping of
indicia;
a fifth step of temporarily bonding a layer of release liner
to said side of said carrier to create an envelope for protecting
and preserving said predetermined grouping of text indicia and

1 The Appellants state that the real party in interest is Lion Brothers Co., Inc.
Appeal Brief filed October 12, 2010 (“App. Br.”) at 1.
2 App. Br. 2; Final Office Action mailed March 12, 2010; Examiner’s
Answer mailed November 8, 2010 (“Ans.”).
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Application 11/121,749

3
for maintaining precise registration on said carrier, wherein said
release liner is adjacent said thermally activated coating;
whereby upon receipt of the thermal appliqué text a user
separates the release liner from the carrier leaving the said
predetermined grouping of text indicia for heat-transfer
application to a garment.
App. Br. 13 (Claims App’x).
The Examiner rejected claims 4-6 under 35 U.S.C. § 103(a) as
unpatentable over Dressler,3 Stahl,4 and Asami.5 Examiner’s Answer mailed
November 8, 2010 (“Ans.”) at 4-13.

ISSUE
The Appellants state that claims 4-6 stand or fall together. App. Br. 5.
Therefore, we select claim 4 as representative of the rejected claims and
confine our discussion to this selected claim. 37 C.F.R. § 41.37(c)(1)(vii).
The Examiner found that Dressler explicitly describes a method as
recited in claim 4 except: (1) “Dressler fails to specifically disclose that a
further cutting step [fourth step] is made, cutting an outline around the
indicia through both the fabric and carrier substrate to form an individual
appliqué”; and (2) “Dressler . . . does not disclose bonding a layer of release
liner over the thermally activated adhesive . . . and to the carrier layer to
create an envelope that protects the indicia from unwanted exposure.” Ans.
4-7. With respect to difference (1), the Examiner found that Dressler
inherently describes the disputed limitation. Id. at 5. Alternatively, the
Examiner relied on the teachings of Stahl to conclude that “[i]t would have

3 U.S. Patent 6,613,412 B1 issued September 2, 2003.
4 U.S. Patent 4,405,401 issued September 20, 1983.
5 U.S. Patent 5,878,681 issued March 9, 1999.
Appeal 2011-006483
Application 11/121,749

4
been obvious for one of ordinary skill . . . to use a known method of forming
individual appliqués, such as the final cutting step disclosed by Stahl, in the
method of Dressler because such an incorporation would have been within
his technical grasp.” Id. at 6. With respect to difference (2), the Examiner
relied on the teachings of Asami to show that “it is well known in the art to
bond a release liner to the carrier layer, over the thermally activated adhesive
of an appliqué to form a protective envelope around said appliqué, and
would have been obvious to one of ordinary skill at the time of the
invention.” Id. at 7-8.
The Appellants contend that “Dressler does not teach or suggest the
use of a temporary pressure-sensitive adhesive (as required by claim 4) to
temporarily register the graphic material to the carrier.” App. Br. 6; see also
id. at 9. The Appellants also urge that the steps recited in claim 4 must be
performed in sequential order. Id. at 7-8. In addition, the Appellants dispute
the Examiner’s finding that Dressler inherently discloses the “fourth step”
recited in claim 4 and argue that Stahl requires performing two parallel cuts
to form individual strips 22, which does not constitute a description of the
“fourth step.” Id. at 10. Lastly, the Appellants contend that “Asami forms
the thermal appliqué on the release layer from peel off sheet 5 instead of the
carrier layer as in Dressler or in claim 4.” Id.
Thus, the issues arising from these contentions are:
Does Dressler disclose the use of a pressure-sensitive adhesive to
temporarily register the graphic material to the carrier, as required by the
“second step” recited in claim 4?
Assuming that the steps recited in claim 4 must be performed in
sequential order, did the Appellants demonstrate that the combination of the
Appeal 2011-006483
Application 11/121,749

5
prior art references would not have resulted in or suggested a method
including the recited steps in sequential order?
Does Stahl provide a reason for one of ordinary skill in the art to cut
through both the graphic material and the carrier around all of the discrete
text letters in an outline cut?
Does Asami provide a reason for one of ordinary skill in the art to
temporarily bond a release liner adjacent to a thermally activated coating?

DISCUSSION
None of the Appellants’ arguments are persuasive to demonstrate
error on the part of the Examiner sufficient to warrant reversal. Our reasons
follow.
Dressler describes a method for applying decorative graphics such as
letter(s) onto a substrate such as a shirt. Col. 1, ll. 10-19; Figs. 1-19.
Dressler’s Figures 1-4 and 10-12 are reproduced below:
App
App

eal 2011-0
lication 11
06483
/121,749
6

App
App

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Dressler
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With ref
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.
06483
/121,749
’s Figures
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7
show a la
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rent mean
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Appeal 2011-006483
Application 11/121,749

8
Dressler also teaches positioning a carrier adhesive 34 on side 40 of
plastic film 32 to form a carrier 30, which is shown with optional release
sheet 36 for the purpose of protecting the carrier adhesive 34 from the
deleterious effects of dust and dirt during transport. Col. 9, ll. 45-48; col.
10, ll. 1-2; col. 11, ll. 28-30, 37-39; Fig. 2. With respect to the carrier
adhesive 34, Dressler teaches that the adhesive will have a sufficient tack
(instantaneous adhesion or stickiness) so as to bond at room temperature the
decorative graphics material securely enough to permit cutting of intricate
shapes with the use of computer-aided cutting means but, when heated to
200-350°F, the tack will be substantially reduced or negligible to the human
touch. Col. 3, ll. 35-59. Dressler teaches that the carrier adhesive may be an
acrylic/isocyanate resin and that suitable acrylic resins are said to include
commercially available pressure sensitive adhesives for removable
applications. Col. 10, ll. 34-43. Dressler states that desirable adhesive
strengths are achieved when the isocyanate resin is incorporated in an
amount less than 1% based on total acrylic solids. Col. 10, ll. 61-62.
As shown in Figures 3 and 4, Dressler teaches the formation of a
laminated web 42 by laminating carrier 30a with the layers of graphic
material 44 and graphic adherent means 50, where layers 44 and 50 may be
previously laminated. Col. 13, ll. 13-26. Dressler teaches cutting of the
decorative graphic 52 by well-known methods including kiss-cutting. Col.
13, ll. 49-61.
Stahl describes a method for producing thermoplastic labeling for
items such as clothing, wherein the labeling are strips or rolls of a plurality
of thermoplastic adhesive labels lightly adhered to a release paper backing
strip. Abst. Stahl teaches that the labeling is manufactured by kiss cutting
App
App

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s, rolls, or
ing. Id. S
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each revo
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Asami teac
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06483
/121,749
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tic film lig
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of just one
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ches the u
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ase sheet)
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erial.

t
Appeal 2011-006483
Application 11/121,749

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Indeed, Dressler’s carrier adhesive 34 can include commercially available
acrylic pressure sensitive adhesives, as we found above.
The Appellants’ argument concerning the sequential order of the steps
recited in claim 4 is also unpersuasive. Even if we accept the Appellants’
proffered claim construction as correct, the argument fails to provide a
reasonably specific discussion on which specific sequence of step(s) would
have been unobvious over the cited prior art references. Our findings
concerning the scope and content of Dressler, taken with the teachings of the
other two references, suggest otherwise.
Regarding the recited “fourth step of cutting through both said fabric
and carrier around all of said discrete text letters or numbers in an outline cut
to separate said predetermined grouping of indicia,”6 as recited in claim 4,
the Appellants urge that the Examiner’s reliance on Stahl is flawed because
the reference requires two separate parallel cuts, which does not equate to an
“outline cut.” App. Br. 10. Other than this conclusory assertion, the
Appellants have not provided us with the benefit of any reasonably detailed
explanation why the disputed limitation excludes the type of cutting that
would result from the combination of Dressler and Stahl. In our view, the
claims as broadly drafted encompass the type of imprecise cuts shown in the
prior art that include more material than the material defined by the exact
contours of a particular symbol. In any event, assuming that the Appellants
are arguing that the claim requires cutting the web to the exact contours of
the symbol, we find no harmful error in the Examiner’s finding, Ans. 6, that

6 For the reasons given in the Appeal Brief at pages 8-9, we agree with the
Appellants that the Examiner failed to demonstrate that Dressler inherently
discloses the recited fourth step.
Appeal 2011-006483
Application 11/121,749

11
such a technique would have been well within the level of the person of
ordinary skill, who is presumed to have some common sense. In fact,
Dressler explicitly teaches that the decorative graphics material is bonded
securely enough to permit cutting of intricate shapes with the use of
computer-aided cutting means and therefore such intricate cutting
techniques would have been well within the level of ordinary skill in the art.
Col. 3, ll. 53-57.
Lastly, we agree with the Examiner’s finding that the use of a release
liner to protect an underlying adhesive was well known in the art, as
evidenced by the explicit teachings in Asami and Dressler. Asami at col. 4,
ll. 52-64 and Dressler at col. 11, ll. 37-39. Hence, we share the Examiner’s
conclusion that a person of ordinary skill in the art would have been
prompted to provide a release liner over Dressler’s carrier including an
activatable adhesive in order to protect the adhesive prior to application of
the graphic to a garment.
For these reasons, we uphold the Examiner’s rejection of claims 4-6.

ORDER
The Examiner’s rejection under 35 U.S.C. § 103(a) of claims 4-6 as
unpatentable over Dressler, Stahl, and Asami is affirmed.
No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. § 1.136(a)(1)(iv).
AFFIRMED

kmm