Ex Parte Shemanski et alDownload PDFBoard of Patent Appeals and InterferencesSep 5, 201211121749 (B.P.A.I. Sep. 5, 2012) Copy Citation 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.”). Appeal 2011-006483 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 grap regis adhe front deco grap a rea meth grap Dres adhe activ we f layer eal 2011-0 lication 11 Dressler hics; Figur tration of red to a fa of the rem rative grap hic to a pr r view of a With ref od include hic 44 (e.g sler states sive such ation temp ind the gra . 06483 /121,749 ’s Figures e 10 show a second d bric substr oval of th hic imme eviously ap carrier to erence to t s a step o ., a graphi that the gr as a polyes eratures g phic adher 1-4 above s a perspe ecorative ate; Figur e carrier f diately afte plied first which a f he elemen f applying c made fro aphic adhe ter, polyu enerally le ent means 7 show a la ctive view graphic wi e 11 shows rom a mul r applicat decorativ irst decora ts shown i a graphic m fabric). rent mean rethane, or ss than 32 50 to be a minated w from the th a first g a perspec ti-colored, ion of a se e graphic; tive graph n Figures adherent m Col. 12, s 50 may mixtures 0ºF. Col. heat activ eb includi front of th raphic pre tive view multiple c cond deco and Figur ic has bee 1-4, Dress eans 50 o ll. 6-9, 36- be a therm thereof, w 12, ll. 38- atable adh ng e viously from the omponent rative e 12 show n applied. ler’s nto 38. oplastic hich have 48. Thus, esive , s 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 strip back Figu Stah prod emb once carry comb embr 62. Col. that adhe foun prov press eal 2011-0 lication 11 s, rolls, or ing. Id. S re 4, repro l’s Figure ucing indi odiment, S each revo a comple ination of Asami te oidery de Asami teac 4, ll. 52-6 Given th Dressler d sive to tem d above, D ides instan ure-sensit 06483 /121,749 sheets of t tahl’s rele duced belo 4 above sh vidual strip tahl teach lution by r te alphabe symbols aches an e signs onto hes a peel 4. ese disclo oes not tea porarily r ressler ex taneous ad ive adhesi hermoplas vant disclo w: ows a kiss s of label es that the otary cutte t, a series such as let mbroidery an article off sheet sures, we f ch the use egister the plicitly tea hesion or ve) to bon 9 tic film lig sure is be cutting an s. Col. 2, labeling m r 36 to fo of just one ters or num method f such as a g (i.e., a rele ind no me of a temp graphic m ches the u stickiness d the carri htly bond st understo d strip sev ll. 9-11. In ay be cut rm short la symbol, o bers. Co or transfer arment. A ase sheet) rit in the A orary pres aterial to se of carri at room te er to the gr ed to a car od by a re ering app describin once or m beling stri r any othe l. 2, ll. 55- ring or sec bst.; col. covering ppellants sure-sensit the carrier er adhesiv mperature aphic mat rier view of aratus for g this ore than ps 22 that r possible 65. uring 1, ll. 30- a binder. ’ argumen ive . As we e 34 that (i.e., a erial. t Appeal 2011-006483 Application 11/121,749 10 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 Copy with citationCopy as parenthetical citation