Dalvey et al.v.Bamberg et al.Download PDFPatent Trial and Appeal BoardFeb 12, 201512193573 (P.T.A.B. Feb. 12, 2015) Copy Citation BoxInterferences@uspto.gov Paper 295 Telephone: 571-272-4683 Entered: 12 February 2015 UNITED STATES PATENT AND TRADEMARK OFFICE PATENT TRIAL AND APPEAL BOARD ____________________ JODI A. DALVEY and NABIL F. NASSER, Junior Party, v. ULF BAMBERG, PETER KUMMER and ILONA STIBUREK, Senior Party. ____________________ Interference 105,961 McK Daley Patent 7,754,042 B2 v. Bamberg Application 13/182,197 ____________________ Interference 105,964 McK Dalvey Patent 7,749,581 B2, Patent 7,766,475 B2 Patent 8,361,574 B2, and Patent 8,703,256 B2 v. Bamberg Application 13/177,284 ____________________ Patent Interference 105,966 McK Dalvey Patent 7,771,554 B2 and RE 41,623 E v. Bamberg Application 13/207,236 and Application 13/223,541 ____________________ Before: FRED E. McKELVEY, RICHARD E. SCHAFER, and JAMES T. MOORE, Administrative Patent Judges. McKELVEY, Administrative Patent Judge. JUDGMENT 2 In view of the DECISION ON MOTIONS (Paper 294), it is— 1 ORDERED that judgment be entered against senior party Ulf Bamberg, 2 Peter Kummer, and Ilona Stiburek and real party in interest Arkwright Advanced 3 Coating, Inc, as to all counts; 4 FURTHER ORDERED that claims 23-34 (all claims) of Bamberg involved 5 application 13/182,197 be FINALLY REFUSED, 35 U.S.C. 135(a); 6 FURTHER ORDERED that claims 30-49 (all claims) of Bamberg involved 7 application 13/177284 be FINALLY REFUSED, 35 U.S.C. 135(a); 8 FURTHER ORDERED that claims 1-17 (all claims) of Bamberg involved 9 application 13/233,541 be FINALLY REFUSED, 35 U.S.C. 135(a); 10 FURTHER ORDERED that claims 1-2 and 5-14 (all claims) of Bamberg 11 involved application 13/207,236 be FINALLY REFUSED, 35 U.S.C. 135(a); 12 FURTHER ORDERED that a copy of this judgment be entered in the 13 administrative record of: 14 (1) Patent 7,754,042; 15 (2) Patent 7,749,518; 16 (3) Patent 8,361,574; 17 (4) Dalvey Application 13/745,995; 18 (5) Reissue Patent 41,623; 19 (6) Patent 7,771,554; 20 (7) Bamberg Application 13/182,197; 21 (8) Bamberg Application 13/177,284; 22 (9) Bamberg Application 13/233,541; and 23 (10) Bamberg Application 13/207,236. 24 3 FURTHER ORDERED that a party seeking judicial review timely serve 1 notice on the Director of the United States Patent and Trademark Office. 2 37 C.F.R. §§ 90.1 and 104.2. 3 FURTHER ORDERED that attention is directed to Biogen Idec MA, Inc., v. 4 Japanese Foundation for Cancer Research, 2014 WL 2167677 (D. Mass. 2014). 5 NOTICE: "Any agreement or understanding between parties to an interference, including any collateral agreements referred to therein, made in connection with or in contemplation of the termination of the interference, shall be in writing and a true copy thereof filed in the Patent and Trademark Office before the termination of the interference as between the said parties to the agreement or understanding." 35 U.S.C. 135(c); see also Bd.R. 205 (settlement agreements). 4 For Dalvey: Devan V. Padmanabhan Nathan J. Witzany Paul J. Robbennolt David A. Davenport Winthrop & Weinstine dpadmanabhan@winthrop.com nwitzany@winthrop.com probbennolt@winthrop.com ddavenport@winthrop.com For Bamber: Bruce J. Koch Thorsten Schmidt Schmidt, LLC bkoch@schmidt-llc.com tschmidt@schmidt-llc.com BoxInterferences@uspto.gov Paper 294 Telephone: 571-272-4683 Entered: 12 February 2015 UNITED STATES PATENT AND TRADEMARK OFFICE PATENT TRIAL AND APPEAL BOARD ____________________ JODI A. DALVEY and NABIL F. NASSER, Junior Party, v. ULF BAMBERG, PETER KUMMER and ILONA STIBUREK, Senior Party. ____________________ Interference 105,961 McK Daley Patent 7,754,042 B2 v. Bamberg Application 13/182,197 ____________________ Interference 105,964 McK Dalvey Patent 7,749,581 B2, Patent 7,766,475 B2 Patent 8,361,574 B2, and Patent 8,703,256 B2 v. Bamberg Application 13/177,284 ____________________ Patent Interference 105,966 McK Dalvey Patent 7,771,554 B2 and RE 41,623 E v. Bamberg Application 13/207,236 and Application 13/223,541 ____________________ Before: FRED E. McKELVEY, RICHARD E. SCHAFER, and JAMES T. MOORE, Administrative Patent Judges. McKELVEY, Administrative Patent Judge. DECISION ON MOTIONS 2 I. Introduction 1 Three interferences were declared: 2 (1) Interference 105,961, 3 (2) Interference 105,964, and 4 (3) Interference 105,966. 5 The interferences were consolidated. See, e.g., Paper 139. 6 Since February of 2014, all papers have been filed in the administrative 7 record of Interference 105,964. 8 References to Paper Numbers in this opinion are to a paper in the record of 9 Interference 105,964 unless otherwise noted. 10 The reader is referred to a Fourth Redeclaration (Paper 178) for an 11 identification of (1) the parties, (2) the patents, reissue patent, and applications 12 involved in each interference, (3) the counts, and (4) earlier constructive reductions 13 to practice (i.e., benefit for the purpose of priority) accorded to the parties. 14 A copy of Paper 178 appears as Appendix 1 to this opinion. 15 The parties are involved in a civil action for infringement filed in the 16 U.S. District Court for the District of Minnesota styled as Schwendimann v. 17 Arkwright Advanced Coating, Inc., Civil Action No. 0:11-cv-00820-ADM-JSM. 18 Paper 14, page 2:5-6. 19 Counsel have advised the Board that the civil action has been stayed pending 20 outcome of this interference. 21 II. Counts 22 A count defines the interfering subject matter and limits the scope of proofs 23 on the issue of priority. 24 The counts are Count 1, Count 2, and Count 3. 25 3 Count 1 is involved in Interference 105,964. Paper 178, page 8. 1 Count 2 is involved in Interference 105,961. Paper 178, page 4. 2 Count 3 is involved in Interference 105,966. Paper 178, pages 12-13. 3 III. Oral argument 4 Oral argument took place on 24 November 2014. 5 A copy of a transcript of oral argument has been made of record. Paper 293. 6 IV. Motions 7 We decide Dalvey Motions 3 and 8 and Bamberg Motions 5 and 7. 8 A. Dalvey Motions 9 1. Dalvey Motion 3 10 Dalvey Motion 3 seeks entry of judgment based on an alleged lack of a 11 written description and enablement. Paper 110. 12 Dalvey Supplement to Motion 3 seeks entry of judgment as to all involved 13 Bamberg claims in Bamberg application 13/207,236, added to the interference 14 after Dalvey Motion 3 was filed. Paper190. 15 Bamberg opposes. Paper 225. 16 Dalvey has replied. Paper 252. 17 2. Dalvey Motion 8 18 Dalvey Motion 8 seeks exclusion of evidence. Paper 113. 19 Bamberg opposes. Paper 227. 20 Dalvey has replied. Paper 262. 21 4 3. Other Dalvey Motions 1 In view of our disposition of Dalvey Motion 3 and Dalvey Motion 8, we 2 have not considered or decided the following Dalvey motions: 3 (1) Dalvey Motion 2 (Paper 86) (for judgment based on § 135(b)); 4 (2) Dalvey Motion 4 (Paper 178) (to substitute counts); and 5 (3) Dalvey Motion 5 (Paper 113) (judgment based on priority). 6 B. Bamberg Motions 7 1. Bamberg Motion 5 8 In response to Dalvey Motion 3 (37 C.F.R. §41.121(a)(2)), Bamberg 9 Motion 5 seeks entry of an order authorizing filing a motion to amend to substitute 10 new claims. Paper 80. 11 Dalvey has opposed. Paper 217. 12 Bamberg has replied. Paper 258. 13 2. Bamberg Motion 7 14 Bamberg Motion 7 sees to exclude evidence. Paper 270. 15 Dalvey has opposed. Paper 274. 16 Bamberg has replied. Paper 279. 17 3. Other Bamberg Motions 18 In view of our disposition of Dalvey Motion 3, we have not considered or 19 decided the following Bamberg motions: 20 (1) Bamberg Motion 1 (Paper 80) (substitute new counts); 21 (2) Bamberg Motion 2 (Paper 117 (vacate accorded benefit); 22 (3) Bamberg Motion 3 (Papers 118 and 190) (contingent on priority 23 be awarded to Dalvey, judgment against Dalvey based on unpatentability 24 over the prior art); and 25 5 (4) Bamberg Motion 6 (Paper 131) (judgment based on priority). 1 V. Dalvey Motion 3 2 A. Introduction 3 The Board may take up motions in any order. 37 C.F.R. § 125(a). 4 We elect to take up Dalvey Motion 3 first because it raises a “threshold†5 issue. If the motion is granted, Dalvey prevails. 37 C.F.R. § 411.201 (definition of 6 “Threshold issue†(2)(ii)); 37 C.F.R. § 41.208(a)(1). 7 Dalvey Motion 3 seeks entry of judgment as to all involved Bamberg claims 8 based on an alleged lack of a written description and enablement. Paper 110; 9 Paper 190. 10 B. Facts1 11 1. Terminology 12 1. “Bamberg†is a reference to the party Bamberg, the real party in 13 interest being Arkwright Advanced Coating, Inc. Paper 25. 14 2. “Ulf Bamberg†or “Mr. Bamberg†is a reference to inventor Bamberg. 15 3. “Dalvey†is a reference to the party Dalvey, the real party in interest 16 being Jodi A. Schwendimann. Paper 17. NuCoat, Inc., and Cooler 17 Concepts, Inc., are licensees. Id. 18 4. “Jodi A. Dalvey†and “Jodi A. Schwendimann†refer to the same 19 person—an inventor named in the involved Dalvey patents. 20 1 To the extent that a finding is a conclusion of law, it may be treated as such. 6 2. Issue 1 5. The general issue is whether Bamberg’s claims are unpatentable under 2 35 U.S.C. § 112, first paragraph, due to a lack of an adequate written 3 description. 4 6. According to Dalvey, Bamberg copied claims in its application for the 5 purpose of provoking interferences with Dalvey patents. 6 7. Dalvey therefore reasons that the copied Bamberg claims must be 7 construed in light of the Dalvey patents, the patents from which the 8 claims were copied. Paper 110, page 5; Agilent Technologies, Inc. v. 9 Affymetrix, Inc., 567 F.3d 1366, 1375 (Fed. Cir. 2009). 10 8. Bamberg, while not explicitly denying that it copied claims, maintains 11 that the words in the claims should be given their ordinary and 12 customary meanings. Paper 225, page 2; Phillips v. AWH Corp., 415 13 F.3d 1303, 1312 (Fed. Cir. 2005) (en banc). 14 9. As will become apparent, in this case whether Agilent or Phillips is 15 applied makes no difference. 16 10. The specific issue is the parties ask us to decide is: Does the 17 descriptive portion of the specification of Bamberg’s PCT application 18 have a written description for claims that cover “white layers†that 19 melt at a temperature below about 220º C.? 20 3. Burden and Standard of Proof 21 11. Dalvey has the burden of proof. 37 C.F.R. § 41.121(b). 22 12. The standard of proof is a preponderance of the evidence. See, e.g., 23 Bilstad v. Wakalopulos, 386 F.3d 1116, 1120-21 (Fed. Cir. 2004) (in 24 7 connection with a motion for judgment based on a lack of written 1 description, movant has a burden by a preponderance of the evidence). 2 13. Whether claimed subject matter is supported by a written description 3 is a question of fact. In re Alton, 76 F.3d 1168, 1171 (Fed. Cir. 1996). 4 4. Witnesses 5 (a) Dr. Scott A. Williams 6 14. Dr. Scott A. Williams was called as a witness for Dalvey. Ex. 2016 7 (direct testimony); Ex. 2045 (cross-examination). 8 15. He was awarded a Bachelor of Science degree from Purdue University 9 (1984) and a Ph.D. in physical chemistry from Montana State 10 University (1989). Ex. 2016, Appendix A (Board Assigned 11 Page #548). 12 16. Dr. Williams is a Professor at the School of Chemistry and Materials 13 Science of the Rochester Institute of Technology. Ex. 2016, ¶ 1. 14 17. He has also served as a Professor of Imaging Materials and Processes. 15 Ex. 2016, ¶ 2. 16 18. Dr. Williams has taught courses in polymer chemistry. Ex. 2016, ¶ 3. 17 19. He was Director of Research & Development at Fotowear, a company 18 that Dr. Williams testified was focused on iron-on-image transfer 19 products. Ex. 2016, ¶ 7. 20 20. Dr. Williams is qualified to express opinions on technical matters 21 related to the subject matter involved in this interference. 22 8 (b) Dr. William M. Risen, Jr. 1 21. Dr. William M. Risen, Jr., was called as a witness on behalf of 2 Bamberg. Ex. 1531 (direct testimony); Ex. 2051 (cross-examination). 3 22. He was awarded a Bachelor of Science degree in Chemistry from 4 Georgetown University (1962) and a Ph.D. from Purdue University 5 (1967). Ex. 1531, Appendix A (Board page #2,653). 6 23. Dr. Risen is a Professor Emeritus of Chemistry at Brown University. 7 Ex. 1531, ¶2. 8 24. He has worked with polymers and associated technology. Ex. 1053, 9 ¶ 8 10 25. Dr. Risen has consulted “in the area of media . . . for more than 20 11 years, including specifically in the area of color print media and image 12 transfer.†Id. 13 26. He is named as an inventor on six patents relating to print media. Id. 14 27. Dr. Risen is qualified to express opinions on technical matters related 15 to the subject matter involved in this interference. 16 (c) Ulf Bamberg 17 28. Mr. Ulf Bamberg was called as a fact witness by Dalvey. Ex. 2030 18 (direct testimony); Ex. 2047 (cross-examination). 19 29. He is a named inventor on the involved Bamberg applications. 20 Ex. 2030, ¶ 1. 21 30. Mr. Bamberg was paid by Dalvey at the rate of $100.00 per hour. 22 9 31. His testimony relates to development activities associated with 1 making the inventions described and claimed in the involved Bamberg 2 applications. Ex. 2030, ¶¶ 3-10. 3 5. Claims Involved in the Interferences 4 32. The claims of the parties involved in the interferences are set out in 5 the following Table 1. 6 Table 1 Interference Corresponding Dalvey Claims Corresponding Bamberg Claims 105,961 Patent 7,754,042, claims 1-22 Appl’n 13/182,197, claims 23-34 105,964 Patent 7,749,581, claims 1-31 Patent 7,766,475, claims 1-21 Patent 8,361,574, claims 1-20 Appl’n 13/745,995, claims 1-20 Appl’n 13/177,284, claims 30-49 105,966 Reissue 41,623, claims 1-17 Patent 7,771,554, claims 1-14 Appl’n 13/233,541, claims 1-17 Appl’n 13/207,236, claims 1-2 and 5-14 Paper 110 (Dalvey Motion 3, page 3); Paper 190 (Dalvey Supplement 7 to Motion 3, page 2. 8 6. Scope of Bamberg’s Claims 9 33. According to Bamberg, “[t]he Bamberg claims, including the 10 [Bamberg] claims that define the three Counts of the Interferences, 11 do not include and should not be construed to include, a melting 12 temperature . . . limitation for the white layer.†Paper 225, 13 page 5:18-20. 14 10 34. A review of the Bamberg claims designated as corresponding to the 1 counts confirms Bamberg’s point. 2 35. For example, Bamberg Claim 30 of Bamberg application 13/177,284 3 involved in Interference 105,964 reads: 4 An image transfer article, comprising: 5 an ink-receptive layer, including at least one 6 surface configured to receive and carry indicia to be 7 transferred; a polymer layer including ethylene acrylic 8 acid underlaying the ink-receptive layer; 9 a white layer underlaying the polymer layer, the 10 white layer including a pigment providing a substantially 11 non-transparent, opaque background for received and 12 transferred indicia; and 13 a silicone-coated removable substrate underlaying 14 the white layer. 15 Ex. 1519, page 3:1-8; Paper 20, page 3:1-8 (italics added). 16 36. Bamberg states in its opposition that: 17 The claim language regarding “white layer†explicitly 18 states that the only requirement for the white layer of 19 claim 30 is to have “a pigment providing a substantially 20 non-transparent, opaque background for received and 21 transferred indicia.†22 Paper 225, page 6:23-26. 23 37. Dr. Williams agrees that claim 30 does not include a melting 24 temperature. Ex. 2045, page 32:17 to page 33:5. 25 11 38. The claims of Bamberg application 13/182,197 involved in 1 Interference 105,961 likewise “do not contain any claim language 2 requiring a melt temperature range.†Paper 225, page 7:7-8. 3 39. Method claim 23 refers to the “white layer†as: 4 at least one of the one or more polymer layers with a 5 pigment, the pigment having a concentration or 6 configuration sufficient to provide an opaque background 7 for received indicia, when transferred to a base. 8 Ex. 1520, page 3:6-8. 9 40. The two Bamberg applications involved in Interference 105,966 do 10 not “contain any claim language that includes or should be construed 11 to include a melt temperature range . . .†12 Paper 225, page 8:1-2. 13 41. For example, claim 1 of Bamberg application 13/12/233,541 defines 14 the “white layer†as: 15 . . . a release layer contacting the image transfer substrate 16 and an image-imparting layer that comprises a polymer 17 that includes indicia wherein the release layer is 18 impregnated with one or more titanium oxide or other 19 white pigment . . . . 20 Ex. 1523, page 3:3-6. 21 42. The involved Bamberg claims include within their scope: 22 (1) embodiments where the white layer is “non-fusible at 23 ironing temperatures (i.e. [that is], up to about 220ºC)†and 24 (2) embodiments where the white layer is fusible at ironing 25 temperatures below 220ºC. 26 12 6. Written Description Portion 1 of Bamberg Specifications 2 43. Normally evaluation of a lack of adequate written description issues is 3 based on the patent or application in which the claims appear. Cf. 4 Reiffin v. Microsoft Corp., 214 F.3d 1342, 1346 (Fed. Cir. 2000). 5 44. To establish what is contained in the written description portion of the 6 Bamberg specifications, Dalvey refers to an English language 7 translation of Bamberg PCT application PCT/IB99/00976 (filed 8 1 June 1999) and published as WO 00/73750 (7 Dec. 2000) 9 (Ex. 1001). 10 45. Bamberg has not objected to Dalvey’s use of the Bamberg PCT 11 application, as opposed to its involved applications, to resolve Dalvey 12 Motion . 13 46. Consistent with what appears to be the desire of the partie, we 14 therefore decide the adequate written description issue on the basis of 15 the Bamberg PCT application. Cf. Brand v. Miller, 487 F.3d 862, 16 869 (Fed. Cir. 2007) (in an interference the Board’s role is one of an 17 impartial adjudicator of an adversarial dispute between two parties). 18 47. There are at least two versions of the PCT application in the record. 19 A first version is identified as Exhibit 1001 and contains Board 20 Assigned Pages #1 through #23 (the Board assigns consecutive page 21 numbers to all exhibits filed). A second version is also identified as 22 Exhibit 1001and contains Board Assigned Pages #1285 through 23 #1307. The pages of Ex. 1001 referred to by the parties correspond to 24 the Board Assigned Pages of the first version. Accordingly, we elect 25 13 to refer to the first version of Ex. 1001. We attach to this opinion a 1 copy of Ex. 1001 (Board Ex. 3001) consisting of Board Assigned 2 Pages #2 through #23 with some of the hand-written line numbers for 3 ease of reference. 4 48. According to Dalvey, “each and every embodiment described [in the 5 Bamberg PCT application] includes a white layer that must not melt 6 at temperature of up to 220ºC.†(Bold in original, matter in brackets 7 added). Paper 110, page 7:5-6. 8 49. Dalvey relies on various portions of the Bamberg PCT specification to 9 support it “up to 220ºC†argument. 10 50. Ex. 3001, page #6:31 to #7:6 (Paper 110, page 7:12-16): 11 The white background layer which is found directly on 12 the adhesive layer, according to the present invention, 13 comprises or is composed of permanently elastic plastics 14 which are non-fusible at ironing temperatures (i.e. 15 [that is] up to about 220°C) and which are filled with 16 white pigments – also non-fusible (up to about 220°C). 17 The elastic plastics must not melt at ironing temperatures 18 in order not to provide with the adhesive layer, e.g. the 19 hot-melt, which provides the adhesion to the textile 20 substrate, an undesired mixture with impaired (adhesive 21 and covering) properties. 22 51. Ex. 3001, page #7:17-18 (Paper 110, page 7:17-18) (bold added): 23 Suitable pigments are only those which do not melt at 24 ironing on temperatures. 25 52. Ex. 3001, page #7:30-32 (Paper 110, page 7:19-21) (bold added): 26 14 These pigments can be blended alone or also in a mixture 1 with other non-fusible (up to 220°C) carrier agents such 2 as for example silicates or aluminates. 3 53. Ex. 3001, page #16:6-29; see also Paper 110, page 7:27-30 (bold 4 added): 5 The coating method comprises the following steps . . . 6 b) application of a white background layer composed of 7 elastic plastics which are non-fusible at ironing on 8 temperatures (i.e. up to about 220°C), and which are 9 filled with white, preferably inorganic, pigments onto the 10 hot-melt layer, preferably with a with a resulting layer 11 thickness of about 20-35 μm. 12 54. Original independent composition claim 1 of the Bamberg PCT 13 application also requires “a white background layer composed of 14 elastic plastics which are non-fusible at temperatures up to 220ºC.†15 Ex. 3001, page #20:8-9; Paper 110, page 7:31-33 (bold added). 16 55. Original independent method claim 14 calls for “application of a 17 white background layer composed of elastic plastics non-fusible at 18 temperatures (i.e. up to about 220ºC).†Ex. 3001, page #22:9-10; 19 Paper 110, page 7:27-30. 20 56. The remaining original claims depend directly or indirectly from 21 independent composition claim 1 or independent method claim 14. 22 7. Testimony of Ulf Bamberg 23 57. While somewhat unusual, named Bamberg inventor Ulf Bamberg was 24 called to testify on behalf of Dalvey. Ex. 2030. 25 15 58. Mr. Bamberg testified about developing and testing of his invention. 1 Ex. 2030, ¶¶ 3-7. 2 59. One concern is said to have been a need “to develop a white 3 background layer that would bind effectively with the ink-receiving 4 layer and adhesive layer and would not crack or erode during typical 5 wear of the transfer substrate . . . .†Ex. 2030, ¶ 7:1-3. 6 60. Mr. Bamberg further testified as follows: 7 In addressing the need for a white background layer that 8 would retain a high level of contrast and resolution once 9 transferred, via application of heat, to the transfer 10 substrate, we came to understand that clarity and 11 resolution are decreased where the white background 12 layer is permitted to melt and mix with the ink-receiving 13 layer and/or the adhesive layer, causing the white 14 background layer to take on a hue of the transfer 15 substrate color. Accordingly, we developed a white 16 background layer that nonetheless formed a strong bind 17 with the ink-receiving layer but did not melt at 18 conventional iron-pressing temperatures (i.e. [that is] 19 temperatures up to about 220ºC). 20 21 That the white background layer comprised an elastic 22 plastic and did not melt and mix with the ink-receiving 23 layer at conventional iron-pressing temperatures, yet had 24 good adhesion with the adjacent layers, were very 25 important to the Invention and were required aspects of 26 the white background layer described in the . . . 27 [Bamberg PCT application]. 28 Ex. 2030, ¶¶ 9-10 (bold added). 29 8. Dalvey Disclosure 30 16 61. Consistent with Agilent, we turn to what is described in the descriptive 1 portion of the Dalvey patents. 2 62. A point in dispute between the parties is whether the descriptive 3 portion of the Dalvey specification describes “white layers†having a 4 melting point below “about 220ºC.†5 63. In support of its discussion of the content of the Dalvey specifications, 6 Dalvey refers to Ex. 2013—Dalvey U.S. Patent No. 6,884,311 B1 7 (Apr. 26, 2005) (“ʼ311 Dalvey Patentâ€). The ʼ311 Dalvey Patent has 8 a few errors, particularly when it comes to descriptions of what is 9 shown in the drawings. See, e.g., Fig. 6 and compare with the 10 discussion at col. 10:15-48 mentioning drawing numbers which do not 11 appear in Fig. 6. Moreover, the ʼ311 Dalvey Patent is not involved in 12 the interferences. In order to avoid confusion, we refer to Ex. 2040—13 Dalvey U.S. Patent No. 7,749,581 B2, a Dalvey patent involved in 14 Interference 105,964. 15 64. According to Bamberg, the “white layer†described by Dalvey does 16 not melt at ironing temperatures (presumably meaning temperatures 17 above about 220º C.). Paper 225, page 15:12-13. 18 65. In support of its position, Bamberg relies on the following: 19 Because the polymeric component of the peel layer 520 20 generally has a high melting point, the application of heat, such 21 as from an iron, does not result in melting of this layer or in a 22 significant change in viscosity of the overall peel layer 520. 23 The change in viscosity is confined to the polymeric component 24 that actually contacts the ink or toner and is immediately 25 adjacent to the ink or toner. 26 17 Id., Ex. 2013, col. 9:34-41; Ex. 2040, col. 9:33-39. We note that 1 element 520 does not appear in the drawings. 2 66. Unlike Bamberg, Dalvey does not describe a minimum melting 3 temperature. 4 67. Fig. 8 of the ʼ311 Dalvey patent is reproduced below. 5 6 Fig 8 depicts a a cross-sectional view of one 7 process of image transfer onto a colored product. 8 68. Example 4 has the following to say about Fig. 8: 9 As shown at 800 in Fig. 8, the peeled printed layers 820, 10 including at least one or more layers collectively 11 comprising a white or luminescent pigment and received 12 indicia, were then placed against a fabric 854 and 13 covered with release paper 852. Heat 850 was applied to 14 the peeled printed layers 820 and the release paper 852. 15 The heat 850 was applied at 200 F, 225 F, 250 F, 300 F, 16 350 F, and 400 F. A good image transfer was observed 17 for all of these temperatures. 18 18 Ex. 2040, col. 10:65 to col. 11:5. 1 69. The Farenheit temperatures described by Dalvey converted to 2 Centigrade temperatures are set out below: 3 Farenheit Centigrade 200 ~93 225 ~107 250 ~121 300 ~148 350 ~177 400 ~204 70. On the other hand, Bamberg describes iron-on temperatures in the 4 range of 160 to 220ºC, preferably 170ºC. Ex. 3001, page 17:1-4; see 5 also Ex. 3001, page 18:31 (“about 190ºCâ€). 6 71. The iron-on temperatures described by Dalvey are consistent with the 7 use of plastics that are viscous at temperatures lower than the plastics 8 described by Bamberg. 9 9. Testimony of Dr. Williams and Dr. Risen 10 72. Dr. Williams explains why he could not find a Bamberg written 11 description of a white layer that melted or was fusible at temperatures 12 below 220ºC. Ex. 2016, ¶¶ 13, 15, and 18. 13 73. His testimony is based on his analysis of (1) portions of the Bamberg 14 PCT priority document (Ex. 2016, ¶ 13) and (2) testimony of Ulf 15 Bamberg (Ex. 2016, ¶ 19–20). 16 19 74. Dr. Risen, while generally addressing an adhesive layer, does not 1 convincingly explain how the Bamberg PCT application adequately 2 describes a “white layer†having a melting temperature below about 3 220 ºC. 4 75. Dr. Risen, while critical of Dr. Williams (Ex. 1531, ¶¶ 36–38), 5 nowhere points to any portion of the Bamberg PCT application 6 discussing a “white layer†having a melting point below about 200ºC. 7 76. To the extent there is a conflict between the testimony of Dr. Williams 8 and that of Dr. Risen, we credit the testimony of Dr. Williams over 9 that of Dr. Risen. 10 77. Unlike Dr. Risen, the facts and opinions stated by Dr. Williams are 11 based on the relevant document, viz., the Bamberg PCT application 12 and are more consistent with than document than any opinion 13 expressed by Dr. Risen. 14 10. Prosecution History of 15 Bamberg Application 13/930,116 16 78. Dalvey calls attention to prosecution history in Bamberg 17 Application 13/930,116—an application not involved in these 18 interferences. Paper 110, page 8:24 to page 9:19. 19 79. In an Office Action dated 13 November 2013, the Examiner rejected 20 then pending claims 1-11 and 13-20 based on a lack of a written 21 description. Ex. 2008, page 2-3. 22 80. The Examiner found in connection with then-pending claims 1 and 19 23 that “[t]here is no support in the [descriptive portion of] the 24 20 specification for ‘a softening point temperature of less than about 220 1 degree[s] C.†Id. at page 3:1-2. 2 81. Claim 1 of Bamberg application 13/930,116 read at the time as 3 follows: 4 An image transfer article, comprising: an image-parting 5 member having a softening point temperature less than 6 about 220 degree[]C., the image-imparting member 7 including (i) at least one surface configured to receive 8 and carry indicia to be transferred, the at least one surface 9 configured to be transferred in its entirety, and (ii) at least 10 one portion of a pigment which, when transferred, 11 provides an opaque background for received indicia; and 12 a removable substrate disposed adjacent the image-13 imparting member. 14 Ex. 2033, page 2 (italics added). 15 82. Assigning any weight to the prosecution history is somewhat difficult 16 other than to note that Dr. Williams’ opinion with respect to lack of a 17 written description relating to the melt temperature is consistent with 18 the Examiner’s rejection. Ex. 2016, ¶¶ 21-22. 19 11. Additional Finding 20 83. The specifications of the involved Bamberg applications do not 21 contain an adequate written description of the subject matter claimed 22 in those applications. 23 21 C. Analysis 1 1. Agilent-based Analysis 2 Bamberg copied claims from the Dalvey patents to provoke the interference. 3 Accordingly, the scope of the copied claims is to be determined based on the 4 written description of the Dalvey patents. Agilent Technologies, Inc. v. Affymetrix, 5 Inc., 567 F.3d 1366, 1377 (Fed. Cir. 2009). 6 In so many words, Dalvey does not describe a “white layer†that comprises 7 “plastics which are [required to be] non-fusible at ironing temperatures (i.e., up to 8 about 220º C) . . . .†(Ex. 1001, page 6:28-35. 9 Therefore, under Agilent, the Bamberg claims are to be construed as 10 “generic†claims for the purpose of determining whether Bamberg describes the 11 Dalvey inventions. 12 We find that Dalvey describes a “generic†invention where any suitable 13 white layer may be used whereas Bamberg describes a “sub-generic†invention 14 within the scope of Dalvey’s “generic†invention where the Bamberg white layer 15 must be made of plastics that are non-fusible at ironing temperatures “up to about 16 220ºC.†17 Dalvey does not require use of a plastic that is non-fusible at ironing 18 temperatures up to about 220ºC. 19 When Bamberg’s claims are construed pursuant to Agilent, we next look to 20 the descriptive portion of the Bamberg specification with the view to determining 21 whether Bamberg describes the Dalvey “generic†invention. 22 As is apparent from our findings, we find that Bamberg does not describe 23 Dalvey’s “generic†invention. 24 22 It follows that under Agilent, Bamberg lacks the necessary written 1 description and therefore the Bamberg claims involved in the interference are not 2 patentable to Bamberg. 3 2. Non-Agilent Analysis 4 In opposing Dalvey Motion 3, Bamberg does not expressly concede that 5 Agilent is applicable precedent as applied to these interferences. 6 Rather, we understand that Bamberg is arguing that (1) the principles of 7 Phillips v. AWH Corp., 415 F.3d 1303, 1312 (Fed. Cir. 2005) (en banc) apply, 8 (2) words of the involved Bamberg claims should be given their ordinary meaning, 9 (3) when the words are given their ordinary meaning the claims should be 10 construed broadly to cover what we have referred to as a “generic†invention, and 11 (4) the descriptive portion of the involved Bamberg specification support a 12 “generic†invention. Paper 225, page 2:21 through page 3:12. 13 Bamberg goes on to say that limitations from a specification cannot be read 14 into the claims. Id. page 3:13-24. 15 Basically, what Bamberg may be arguing is that the Bamberg claims should 16 be construed in light of the descriptive portion of the Bamberg specifications. 17 Cf. United States v. Adams, 383 U.S. 39, 49 (1966), claims of a patent limit the 18 invention and the specification cannot be used to broaden the invention; 19 nevertheless claims are to be construed in light of the specification and both the 20 specification and claims are to be read with a view to ascertaining the invention); 21 Am. Fruit Growers v. Brogdex Co., 283 U.S. 1, 5 (1931) (the claim of a patent 22 must always be explained by and read in connection with the specification). 23 23 Assuming arguendo that Agilent is not applicable precedent, as our above-1 discussed findings make clear, we would reach the same finding, viz., the 2 descriptive portion of the Bamberg specifications do not provide an adequate 3 written description of a “white layer†made of plastics that are non-fusible at 4 ironing temperatures below about 220ºC. 5 Thus, apart from Agilent, it still follows that the broadly claimed Bamberg 6 subject matter is not described in the descriptive portions of the Bamberg 7 specifications. 8 D. Decision 9 For the reasons given, Dalvey Motion 3 is granted, based solely on a failure 10 of Bamberg to satisfy the written description requirement of the first paragraph of 11 35 U.S.C. § 112. 12 We have not considered or decided any issue in connection with Dalvey’s 13 lack of enablement arguments. 14 VI. Bamberg Responsive Motion 5 15 A. Background 16 In response to Dalvey Motion 3 (lack of written description), Bamberg 17 Responsive Motion 5 requests entry of amendments in Bamberg applications: 18 (1) Bamberg application 13/182,197 (Paper 130, Appendix 3); 19 (2) Bamberg application 13/177,284 (Paper 130, Appendix 5); 20 (3) Bamberg application 13/223,541 (Paper 130, Appendix 7); and 21 (4) Bamberg application 13/207,236 (Paper 130, Appendix 9) 22 Dalvey has opposed. Paper 217. 23 24 Bamberg has replied. Paper 258. 1 B. Facts 2 1. Requirement for a Claim Chart 3 1. The rules provide that the Board may authorize a party to file a 4 responsive motion to add amended claims. 37 C.F.R. § 41.121 (a)(2). 5 2. The rules specifically provide: 6 Any motion to add a claim must include . . . [a] claim chart 7 showing where the disclosure of the . . . application provides 8 written description of the subject of the claim . . . . 9 37 C.F.R. § 41.110(c)(2). 10 3. The Standing Order (Paper 2) also discusses the need for claim charts. 11 Standing Order ¶ 110. 12 4. Paragraph 110 states that “[a] movant seeking to add a claim must 13 comply with the requirements of Bd.R. 110(c) for the proposed 14 claim.†Standing Order, ¶ 110 (first sentence). 15 5. The Federal Register Notice of Final Rule advises that “a movant 16 adding a claim must show where the written description for the claim 17 can be found (§ 41.110(c)(2)).†69 Fed. Reg. 49960, 49995 (col. 2, 18 first full paragraph, second sentence) (Aug. 12, 2004). 19 6. The requirement for a claim chart serves a highly useful function in 20 administration of interferences. 21 7. Often an argument opposing a motion to add claims is a lack of 22 written description as to those claims. 23 8. A party seeking to add a claim, and providing a claim chart, puts the 24 opponent on notice of why the moving party believes the subject 25 25 matter proposed added claim is supported by an adequate written 1 description. 2 9. The claim chart permits the opponent to focus on those claimed 3 limitations that an opponent believes are not supported by an adequate 4 written description. 5 10. Any opposition can then address why the information in the claim 6 chart is not adequate to confirm support for a written description of 7 particular limitations. 8 11. The moving party may then file a reply with any observations in its 9 opponent’s opposition. 10 12. Failure to file a claim chart complicates administration of interference 11 cases and is contrary to the policy objectives of the Director that 12 proceedings under Part 41 be conducted in a just, speedy, and 13 inexpensive manner. 37 C.F.R. § 41.1(b). 14 13. Where a party does not provide a claim chart, the opponent—a party 15 not having the burden of proof—out of an abundance of caution may 16 feel that it has to discuss in the first instance where a particular 17 limitation is not supported by an adequate written description. 18 14. In that case, the moving party addresses the opponent’s observations 19 in its reply. 20 15. However, the rules do not authorize an opponent to file a sur-reply. 21 16. The opponent, therefore, would not have a fair opportunity to address 22 a moving party’s views on where the descriptive portion of the 23 specification describes any contested limitation. 24 26 17. It is possible, of course, that the Board can authorize a sur-reply. 1 However, authorizing a sur-reply burdens both the opponent and the 2 Board. 3 18. If a party complies with the rules, no occasion arises (1) for the 4 opponent to ask for a conference call to seeking authorization to file a 5 sur-reply, (2) for the conference call, (3) for additional resources to be 6 expended by the opponent in preparing and filing a sur-reply, and 7 (4) possible delay in reaching a final resolution of the interference. 8 2. Bamberg—No Claim Chart Provided 9 19. Bamberg did not provide a claim chart with its Responsive Motion 5. 10 20. The lack of a claim chart was called to our attention, as well as to the 11 attention of Bamberg, in Dalvey Opposition 5. Paper 217, page 1:22 12 through page 2:2. 13 21. Notwithstanding this fact, we have not found in Bamberg Reply 5 any 14 discussion responsive to Dalvey’s opposition observation concerning 15 the lack of claim chart. 16 22. Bamberg Motion 5 was accompanied by a Statement of Facts. 17 Paper 130, Appendix 2. 18 23. Dalvey Opposition 5 admits or denies facts set out by Bamberg. 19 Paper 217, Appendix 2. 20 24. Dalvey Appendix 2 does not set out any additional facts. 21 25. A conference call was held on 12 May 2014 after which a Post 22 Conference Call Order was entered. Paper 139. 23 26. Dalvey observes that: 24 27 [i]n view of the Board’s Post Conference call Order entered 1 May 12, 2014 (Paper 139), page 8, indicating that the parties 2 may, but no longer requiring the parties to, continue using a 3 statement facts in opposition and replies, however, Dalvey has 4 not provided additional facts in Appendix 2 instead opting to 5 provide all facts in the body of the opposition, as requested [by 6 the Board] during the telephone conference of May 1, 2014. 7 Paper 217, page 1:13-17. 8 27. The order provided , inter alia, that “[t]he parties may continue to use 9 [a] statement of facts in opposition and replies.†Paper 139, page 8. 10 28. Bamberg maintains that Dalvey “misread this Order.†Paper 258, 11 page 1:10. 12 29. As a result of Dalvey’s failure to supply additional facts (to be 13 admitted or denied), Bamberg says that it “is now unable to respond 14 properly to Dalvey’s additional ‘material facts’ . . . [Bamberg’s] 15 opposition.†Paper 258, page 1:15-16. 16 30. Dalvey did not “misread this Order.†17 31. Rather, by use of the word “mayâ€, the judge assigned to the 18 interferences authorized—consistent with the rules—facts to be set 19 out in (1) the body of an opposition or reply or (2) a statement of 20 facts. 37 C.F.R. § 41.104(b) (a rule may be waived); 37 C.F.R. 21 § 121(d) (requiring a statement of facts). 22 32. Dalvey elected to set out its additional facts in the body of its 23 opposition and we find no fault in Dalvey having done so. 24 33. Moreover, Dalvey Opposition 5 plainly factually states that Bamberg 25 did not supply the required claim chart. Paper 217, page 2:1-2. 26 28 C. Analysis 1 A party seeking to add a new claim has the burden of establishing that the 2 new claim is supported by an adequate written description. 37 C.F.R. § 41.121(b). 3 Because of the burden, the moving party must establish that all, not just 4 some, limitations in the claim proposed to be added are supported by an adequate 5 written description. In other words, the claim as a whole—as opposed to a 6 limitation of the claim—must be supported. 7 The Director has determined that the burden is best satisfied with a claim 8 chart. 37 C.F.R. § 41.110(c)(2). 9 Contrary to the Director’s policy requiring a claim chart, Bamberg in its 10 statement of facts details only where some, but not all, of the claimed limitations 11 that are said to be supported in the descriptive portion of the specification. 12 Thus, Bamberg left Dalvey to figure out in the first instance whether the 13 proposed new claims are adequately supported—but that was not Dalvey’s burden. 14 Proposed new claim 39, to be added to involved Bamberg application 15 13/182,197, calls for “an adhesive layer with a softening point [that is] less than 16 about 220ºC . . . .†Paper 130, Appendix 3, page 11-5 (italics added). 17 For example, according to Bamberg, “[t]he temperature range for new 18 claim 39 is supported in the specification of the Bamberg [PCT] priority 19 application. Ex. 1001 at 6[5], 8[2], 7[3], 8[5], 10[2] and 18[6]. Paper 130, 20 page 18, Fact 22. 21 A first difficulty with Fact 22 is that we are not sure what is meant by 6[5]. 22 A second difficulty is that a computer word search of Ex. 1001 does not 23 reveal any mention of the word “softening.†24 29 A third difficulty is that even if there were support for the limitation, 1 Bamberg still would not have satisfied its burden to show that the claim as a whole 2 is supported by an adequate written description. 3 A fourth difficulty is that the proposed new claim needs to be supported in 4 the involved Bamberg application. Showing that a claim is supported in a priority 5 application does not necessarily establish support in an involved application. 6 Bamberg’s election not to present a claim chart ultimately amounts to a 7 subtle way of shifting the burden of proof to Dalvey. 8 The shift becomes apparent from the remarks in the Bamberg reply 9 concerning its alleged “inability†to respond to Dalvey’s opposition due to an 10 alleged failure on the part of Dalvey to present additional facts in a statement of 11 facts. 12 To the extent that Bamberg had an “inability,†that “inability†is a self-13 imposed hardship brought on by Bamberg’s failure to supply a claim chart in the 14 first instance. 15 D. Decision 16 For the reasons given, Bamberg Motion 5 is denied. 17 VII. Dalvey Miscellaneous Motion 8 18 Dalvey Miscellaneous Motion 8 seeks exclusion of some of Bamberg’s 19 evidence. 20 However, with one exception, none of the evidence sought to be excluded 21 has been relied upon by Bamberg in connection with Dalvey Motion 3 or Bamberg 22 Motion 5. 23 30 The exception is a part of the direct declaration testimony of Dr. Williams 1 related to enablement. Ex. 2016, ¶¶ 36-38. 2 We have not found it necessary to consider ¶¶ 36-38. We did not find it 3 necessary to reach enablement because we found that Dalvey sustained its burden 4 with respect to Dalvey Motion 3 based on lack of written description. 5 Accordingly, we need not further consider Dalvey Miscellaneous Motion 8. 6 Dalvey Miscellaneous Motion 8 is dismissed without prejudice to further 7 consideration should it become necessary. 8 VIII. Bamberg Miscellaneous Motion 7 9 Bamberg Miscellaneous Motion 7 seeks exclusion of some of Dalvey’s 10 evidence. 11 However, none of the evidence sought to be excluded has been relied upon 12 in connection with Dalvey Motion 3 or Dalvey Opposition 5. 13 Accordingly, we need not further consider Bamberg Miscellaneous 14 Motion 7. 15 Bamberg Miscellaneous Motion 7 is dismissed without prejudice to further 16 consideration should it become necessary. 17 31 For Dalvey: Devan V. Padmanabhan Nathan J. Witzany Paul J. Robbennolt David A. Davenport Winthrop & Weinstine dpadmanabhan@winthrop.com nwitzany@winthrop.com probbennolt@winthrop.com ddavenport@winthrop.com For Bamberg: Bruce J. Koch Thorsten Schmidt Schmidt, LLC bkoch@schmidt-llc.com tschmidt@schmidt-llc.com Appendix 1 Copy of Paper 178 Fourth Redeclaration -1- BoxInterferences@uspto.gov Paper 178 Telephone: 571-272-4683 Entered: 22 May 2014 UNITED STATES PATENT AND TRADEMARK OFFICE PATENT TRIAL AND APPEAL BOARD ____________________ JODI A. DALVEY and NABIL F. NASSER, Junior Party, v. ULF BAMBERG, PETER KUMMER and ILONA STIBUREK, Senior Party. ____________________ Interference 105,961 McK Daley Patent 7,754,042 B2 v. Bamberg Application 13/182,197 ____________________ Interference 105,964 McK Dalvey Patent 7,749,581 B2, Patent 7,766,475 B2 Patent 8,361,574 B2, and Patent 8,703,256 B2 v. Bamberg Application 13/177,284 ____________________ Patent Interference 105,966 McK Dalvey Patent 7,771,554 B2 and RE 41,623 E v. Bamberg Application 13/207,236 and Application 13/223,541 ____________________ Before: FRED E. McKELVEY, Administrative Patent Judge. FOURTH REDECLARATION -2- I. Introduction 1 This Fourth Redeclaration is being entered to consolidate in one paper all 2 relevant information in (1) Interference 105,961, (2) Interference 105,964, 3 and (3) Interference 105,966. 4 Unless otherwise noted, a reference to a Paper is to a Paper filed in 5 Interference 105,964. 6 It is noted that in some patents inventor Nassar’s first name is listed as 7 “Nabil†whereas in other places in the record the name is listed as “Nabillâ€. 8 This fourth redeclaration uses the first name “Nabilâ€. 9 II. Declarations and previous redeclarations of the interferences 10 A. Interference 105,961 11 Interference 105,961 was declared on 26 September 2013. Interference 12 105,961, Paper 1. 13 B. Interference 105,964 14 Interference 105, 964 was declared on 26 September 2013. Paper 1. 15 A “first†redeclaration order was entered in Interference 105,964 on 16 27 November 2013. Paper 40. 17 C. Interference 105,966 18 Interference 105,966 was declared on 26 September 2013. Interference 19 105,966, Paper 1. 20 A “second†redeclaration order was entered in Interference 105,966 on 21 27 November 2013. Interference 105,966, Paper 42. 22 A “third†redeclaration order was entered in Interference 105,966 on 23 4 March 2014. Interference 105,964, Paper 124. 24 -3- III. Papers in interferences 1 The file of Interference 105,961 contains Papers 1-40, as well as a transfer 2 order. 3 The file of Interference 105,966 contains Papers 1-45, as well as a transfer 4 order. 5 With the exception of transfer orders, since February of 2014, all papers in 6 all interferences have been entered as papers in Interference 105,964. 7 All papers will continue to be entered in Interference 105,964, until a final 8 decision and judgment is entered in Interference 105,964, at which time a copy of 9 the final decision and judgment will be entered in Interference 105,961 and 10 Interference 105,966. 11 As set out in this “fourth†redeclaration, Count 1 continues to appear in 12 Interference 105,964. Count 2 appears in Interference 105,961 (replacing Count 1 13 of that interference). Count 3 appears in Interference 105,966 (replacing original 14 Count 1 of that interference). 15 IV. Interference 105,961 16 A. Identification and order of the parties 17 1. Junior Party (1 patent) 18 Named Inventors: Jodi A. Dalvey, Minnesota 19 Nabil F. Nasser, Minnesota 20 21 Patent: US 7,754,042 B2 22 issued 13 July 2010 23 based on application 12/193,573 24 filed 18 August 2008 25 26 Patent Pub: U.S. Patent Publication 2008/0305253 A1 27 11 December 2008 28 -4- 1 Title: Method of image transfer on a colored base 2 3 Assignee: Jodi A. Schwendimann 4 5 2. Senior Party (1 application) 6 7 Named Inventors: Ulf Bamberg, Germany1 8 Peter Kummer, Switzerland 9 Ilona Stiburek, Switzerland 10 11 Application: Application 13/182,197, 12 filed 13 July 2011 13 14 Patent Pub: U.S. Patent Publication 2012/0120170 A1 15 17 May 2012 16 17 Title: Ink-jet transfer system for dark textile substrates 18 19 Assignee: Arkwright Advanced Coating, Inc. 20 21 B. Count, claims of the parties, and accorded benefit 22 1. Count 22 23 A method according to Claim 23 of Bamberg application 13/182,197 24 or 25 a method according to Claim 1 of Dalvey Patent 7,754,042. 26 1 The PTAB understands that inventor Bamberg now resides in Australia. 2 Count 2 replaces Count 1 of Interference 105,961. Original Count 1 of Interference 105,961 called for a “device†but it is clear from the claims mentioned in original Count 1 (now Count 2) that a method—not a device—is involved. -5- 2. Claims of the parties 1 The claims of the parties are: 2 Dalvey: 1-22 3 Bamberg: 23-34 4 The claims of the parties corresponding to Count 2 are: 5 Dalvey: 1-22 6 Bamberg: 23-34 7 The claims of the parties not corresponding to Count 2 are: 8 Dalvey: None 9 Bamberg: None 10 3. Benefit 11 The parties are accorded the following benefit for Count 2: 12 Dalvey: Application 12/193,573, filed 18 August 2008 13 Application 12/034,392, filed 21 February 2008 14 Application 10/911,249, filed 04 August 2004 15 Application 09/541,845, filed 03 April 2000 16 Application 09/391,910, filed 09 September 1999 17 18 Bamberg: Application 13/182,197, filed 13 July 2011 19 Application 12/977,555, filed 23 December 2010 20 Application 09/980,466, filed 12 April 2006 21 Int’l Application IB99/00976, filed 01 June 1999 22 23 V. Interference 105,964 24 A. Identification and order of the parties 25 1. Junior Party (4 patents) 26 a. First patent 27 Named Inventors: Jodi A. Dalvey, Minnesota 28 Nabil F. Nasser, Minnesota 29 -6- 1 Patent: US 7,749,581 B2 2 issued 06 July 2010 3 based on application 12/193,578 4 filed 18 August 2008 5 6 Patent Pub: U.S. Patent Publication 2008/0305288 A1 7 11 December 2008 8 9 Title: Image transfer on a colored base 10 11 Assignee: Jodi A. Schwendimann 12 b. Second patent 13 Named Inventors: Jodi A. Dalvey, Minnesota 14 Nabil F. Nasser, Minnesota 15 16 Patent: US 7,766,475 B2 17 issued 03 August 2010 18 based on application 12/193,562 19 filed 18 August 2008 20 21 Patent Pub: U.S. Patent Publication 2008/0302473 A1 22 11 December 2008 23 24 Title: Image transfer on a colored base 25 26 Assignee: Jodi A. Schwendimann 27 c. Third patent 28 Named Inventors: Jodi A. Dalvey, Minnesota 29 Nabil F. Nasser, Ohio 30 31 Patent: US 8,361,574 B2 32 issued 29 January 2013 33 based on application 12/875,445 34 filed 03 September 2010 35 -7- 1 Patent Pub: U.S. Patent Publication 2010/0323132 A1 2 23 December 2010 3 4 Title: Image transfer on a colored base 5 6 Assignee: Jodi A. Schwendimann 7 d. Fourth patent 8 Named Inventors: Jodi A. Schwendimann, Minnesota 9 Nabil F. Nasser, Ohio 10 11 Patent: US 8,703,256 B2 12 issued 22 April 2014 13 based on application 13/745,995 14 filed 21 January 2013 15 16 Patent Pub: U.S. Patent Publication 2013/0142970 A1 17 06 June 2013 18 19 Title: Image transfer on a colored base 20 21 Assignee: Jodi A. Schwendimann 22 2. Senior party (1 application) 23 24 Named Inventors: Ulf Bamberg, Germany 25 Peter Kummer, Switzerland 26 Ilona Stiburek, Switzerland 27 28 Application: Application 13/177,284, 29 filed 06 July 2011 30 31 Patent Pub: U.S. Patent Publication 2012/0092429 A1 32 19 April 2012 33 34 Title: Ink-jet transfer system for dark textile substrates 35 36 -8- Assignee: Arkwright Advanced Coating, Inc. 1 2 B. Count, claims of the parties, and accorded benefit 3 1. Count 1 4 An image transfer article according to Claim 30 of Bamberg 5 application 13/177,284 6 or 7 an image transfer article according to Claim 1 of Dalvey Patent 7,749,581 8 or 9 an ink-jet transfer article according to Claim 1 of Dalvey Patent 7,766,475 B2 10 or 11 an image transfer article according to Claim 15 of Dalvey Patent 8,361,574 B2 12 or 13 an image transfer article according to Claim 1 of Dalvey Patent 8,703,256 B2. 14 2. Claims of the parties 15 The claims of the parties are: 16 17 Dalvey: 1-31 (US Patent 7,749,581 B2) 18 1-21 (US Patent 7,766,475 B2) 19 1-20 (US Patent 8,361,574 B2) 20 1-20 (US Patent 8,703,256 B2) 21 22 Bamberg: 30-49 23 24 -9- The claims of the parties corresponding to Count 1 are: 1 Dalvey: 1-31 (US Patent 7,749,581 B2 2 1-21 (US Patent 7,766,475 B2) 3 1-20 (US Patent 8,361,574 B2) 4 1-20 (US Patent 8,703,256 B2) 5 6 Bamberg: 30-49 7 The claims of the parties not corresponding to Count 1 are: 8 Dalvey: None 9 Bamberg: None 10 3. Benefit 11 The parties are accorded the following benefit for Count 1: 12 Dalvey (US Patent 7,749,581 B2): 13 Application 12/193,578, filed 18 August 2008 14 Application 12/034,932, filed 21 February 2008 15 Application 10/911,249, filed 04 August 2004 16 Application 09/541,845, filed 03 April 2000 17 Application 09/391,910, filed 09 September 1999 18 19 Dalvey (US Patent 7,766,475 B2): 20 Application 12/193,562, filed 18 August 2008 21 Application 12/034,932, filed 21 February 2008 22 Application 10/911,249, filed 04 August 2004 23 Application 09/541,845, filed 03 April 2000 24 Application 09/391,910, filed 09 September 1999 25 26 Dalvey (US Patent 8,361,574): 27 Application 12/875,445, filed 03 September 2010 28 Application 10/911,249, filed 04 August 2004 29 Application 09/541,845, filed 03 April 2000 30 31 -10- Dalvey (US Patent 8,703,256): 1 Application 13/745,995, filed 21 January 2013 2 Application 12/875,445, filed 03 September 2010 3 Application 10/911,249, filed 04 August 2004 4 Application 09/541,845, filed 03 April 2000 5 Application 09/391,910, filed 09 September 1999 6 7 Bamberg: 8 Application 12/977,555, filed 23 December 2010 9 Application 09/980,466, filed 12 April 2006 10 Int’l Application IB99/00976, filed 01 June 1999 11 VI. Interference 105,966 12 A. Identification and order of the parties 13 1. Junior Party (1 patent and 1 reissue) 14 a. Patent 15 Named Inventors: Jodi A. Dalvey, Minnesota 16 Nabil F. Nasser, Minnesota 17 18 Patent: US 7,771,554 B2 19 issued 10 August 2010 20 based on application 12/034,932 21 filed 21 February 2008 22 23 Patent Pub: U.S. Patent Publication 2008/0149263 A1 24 26 June 2008 25 26 Title: Image transfer on a colored base 27 28 Assignee: Jodi A. Schwendimann 29 30 b. Reissue patent 31 Named Inventors: Jodi A. Schwendimann 32 a/k/a Jodi A. Dalvey, Minnesota 33 Nabil F. Nasser, Minnesota 34 -11- 1 Patent: RE 41,623 E, issued 07 September 2010 2 (US Patent 6,884,311 issued 26 April 2005) 3 based on application 12/218,260 4 filed 11 July 2008 5 6 Title: Method of image transfer on a colored base 7 8 Assignee: Jodi A. Schwendimann 9 2. Senior Party (2 applications) 1 2 a. First application 3 4 Named Inventors: Ulf Bamberg, Germany 5 Peter Kummer, Switzerland 6 Ilona Stiburek, Switzerland 7 8 Application: Application 13/223,541, 9 filed 01 September 2011 10 11 Patent Pub: U.S. Patent Publication 2012/0105560 A1 12 03 May 2012 13 14 Title: Ink-jet transfer system for dark textile substrates 15 16 Assignee: Arkwright Advanced Coating, Inc. 17 b. Second application 18 Named Inventors: Ulf Bamberg, Germany 19 Peter Kummer, Switzerland 20 Ilona Stiburek, Switzerland 21 22 Application: Application 13/207,236, 23 filed 10 August 2011 24 25 Patent Pub: U.S. Patent Publication 2012/0120132 A1 26 17 May 2012 27 28 Title: Ink-jet transfer system for dark textile substrates 29 30 Assignee: Arkwright Advanced Coating, Inc. 31 B. Count, claims of the parties, and accorded benefit 32 1. Count 3 33 A method according to Claim 1 of Bamberg application 13/207,236, 34 or 35 13 a method3 according to Claim 1 of Bamberg application 13/223,541, 1 or 2 a method according to Claim 1 of Dalvey RE 41,623 E, 3 or 4 a method according to Claim 1 of Dalvey Patent 7,771,554 B2. 5 2. Claims of the parties 6 The claims of the parties are: 7 Dalvey: 1-17 (RE 41,623 E) 8 1-14 (US Patent 7,771,554 B2) 9 Bamberg: 1-14 (Application 13/207,236) 10 1-17 (Application 13/223,541) 11 The claims of the parties corresponding to Count 3 are: 12 Dalvey: 1-17 (RE 41,623 E) 13 1-14 (US Patent 7,771,554 B2) 14 Bamberg: 1-14 (Application 13/207,236) 15 1-17 (Application 13/223,541) 16 17 The claims of the parties not corresponding to Count 3 are: 18 Dalvey: None 19 Bamberg: None 20 3 Count 3 replaces Count 1 of Interference 105,966. Count 1 of Interference 105,966 calls for a “device†but it is clear from the claims mentioned in Count 1 (now Count 3) that a method—not a device—is involved. 14 3. Benefit 1 The parties are accorded the following benefit for Count 3: 2 Dalvey (RE 41,623 E): 3 Application 12/218,260, filed 11 July 2008 4 Application 09/541,845, filed 03 April 2000 5 Application 09/391,910, filed 09 September 1999 6 7 Dalvey (US Patent 7,771,554 B2): 8 Application 12/034,932, 21 February 2008 9 Application 10/911,249, filed 04 August 2004 10 Application 09/541,845, filed 03 April 2000 11 Application 09/391,910, filed 09 September 1999 12 13 Bamberg (both applications): 14 Application 12/977,555, filed 23 December 2010 15 Application 09/980,466, filed 12 April 2006 16 Int’l Application IB99/00976, filed 01 June 1999 17 18 15 cc (via Electronic mail): 1 2 Junior Party Dalvey: 3 4 Devan V. Padmanabhan (dpadmanabhan@winthrop.com) 5 Nathan J. Witzany (nwitzany@winthrop.com) 6 7 Senior Party Bamberg: 8 9 Bruce J. Koch, Esq. (bkoch@schmidt-llc.com) 10 Thorsten Schmmidt, Esq. (tschmidt@schmidt-llc.com) 11 Appendix II Exhibit 3001 ,..pA~~y V. BAMBERG DATE FILED: 11/03/LB,i,rJJB£RG EXHIBIT 1001 DOCUMENT NO: ~ntested Case 105,964 (JGN) ~nTransCo, Inc. INTERNATIONAL TRANSLATION COMPANY TRANSLATIONS FROM AND INTO ALL LANGUAGES PREPARED BY SPECIALISTS P.O. BOX 239 LYNNFIELD, MA 01940 (781) 334-3123 FAX (781) 334-4445 VERIFICATION OF TRANSLATION Title of Translated Document: Ink-jet transfer systems for dark textile substrates PCT/IB99/00976 Original Language of Translated Document: German The undersigned declares that: I am a professional translator representing InTransCo, Inc., with English as a native language and German as an acquired language. I have over thirty years of full-time translating experience in general, technical, chemical and related fields. To the best of my knowledge and belief, the attached is a true, accurate and complete English translation of the above-referenced German document. ~-;;'1~ Date:__1=-.;1:.!../1.:..:.1-=-1=3______Signature: A. M. Russell Board Assigned Page #1 Ink-jet transfer systems for dark textile sub strates Technical Field The present invention relates to an ink-jet transfer system or an ink-jet transfer print, respectively, according to the preamble of claim 1, as well as a method according to the independent claims 14 and 16. Background Art Transfer prints enjoy a big popularity, as they allow the application of any graphic presentation, terns, images or type faces, in particular on clothes like T-shirts, sweatshirts, shirts or also other textile sub strates like for instance mouse-pads. Of particular inter est are ink-jet transfer systems (ink-jet transfer prints), providing the potential users with the possibility of an individual selection of electronically processible and by means of graphic presentations which can be stored on a computer, and which can eventually be printed or ironed on, respectively, onto his desired garment or another textile substrate (support), respectively, by the user himself. Thereby, in a first step, the red, electronically pro cessible image is produced by the user of the transfer print by means of a computer, which is transmitted from the computer to a suitable printer, for example an ink-jet printer, which in turn prints the desired image onto the transfer system. The transfer print thus prepared has to display a structure which allows the further use for nt ing onto for example a textile substrate. By means of a suitable transfer print, the red graphic presentation is brought to adhesion onto the desired textile substrate. Usually, graphic presentations are applied under supply of heat and pressure by a hot copy, and optionally by a prior cold copy onto the desired textile substrate. Board Assigned Page #2 In recent years, efforts have been undertaken in order to improve the hot transfer systems as well as to enable the printing of the desired graphic presentation on to the textile substrate with a satisfactory quality. For instance, US-5,242,739 describes a heat sensitive transfer paper which is capable of receiving an image and comprises the following components: a) a flexible cellulose containing, unwoven, textile-like paper which has a superior and an inferior surface and b) a melting trans fer-film layer which is capable of receiving an image, and which is situated onto the superior surface of the paper support, c) as well as optionally an intermediary hot-melt layer. The film layer is composed of about 15 to 80 weight % of a film-forming binder and about 85 to about 20 weight % of a powder like thermoplastic polymer, whereby the film forming binder and the thermoplastic polymer have a melting point of between about 65°C and 180°C. US-5,501,902 represents a further development of US-5,242,739, which is composed of a two-layer system as well, whereby, however, for the improvement of the printing image, an ink viscosity agent is further contained. Fur thermore, in the transfer print of US-5,501,902, preferably a cationic, thermoplastic polymer is contained for the im provement of the ink-absorbing capacity. As pigments for the receipt of the ink dye stuff, in the prior art, usually polyesters, polyethylene wax, ethylen~-vinylacetate copolymers, and as a binder, polyacrylates, styrene-vinylacetate copolymers, nitrile rubber, polyvinylchloride, polyvinylacetate, ethylene acry late copolymers and melamine resins are mentioned. In WO 98/30749 (Oce-Switzerland) an ink-jet transfer system is described, which comprises a carrier ma terial, a hot-melt layer being applied onto the carrier ma terial and at least an ink-receiving layer. Thereby, the ink-receiving layer is a mixture of a highly porous pigment Board Assigned Page #3 and a binder, whereby the molecules of the pigment and op tionally of the binder as well as optionally of the hot melt are capable of forming chemical bonds with the dye stuff molecules of the ink. A special difficulty, however, is associated with transfer prints, which shall be applied onto a dark textile support. Since the dyestuffs are transparent against dark backgrounds, i.e. maximally perceptible as shadow, first of all a light contrast background has to be created to make the desired colored image better visible. l' According to the prior art, for this, in the course of a 2 12 step method or a one-step method, a transfer print is ap \~ plied onto a dark piece of textile. In case of the conven I~ tional 2-step method, a white textile fabric equipped with )5 a hot-melt adhesive on the back is laminated with a trans I~ fer foil that was imprinted by a xerographic method (or 11 ink-jet) and then pressed with the hot-melt adhesive side I~ on the dark garment to be imprinted (T-shirt) by means of a I~ transfer press at ca. IS0°C and a pressure of about 7 bar. to The image side with the thin foil (transfer layer) on it zt thereby is protected by a silicone paper. After the trans t~ fer operation that lasts about 10 seconds, the silicone pa Z} per is removed. The adhesion of the transfer print system 2~ on the dark garment is achieved by means of a polyethylene lS or polyester/polyamide textile adhesion (i.e. a hot-melt z~adhesive) of the contrast support on the textile substrate. t1 The whole system is felt to be unpractical by 2~the user in so far as one needs a laminator and/or a tex l~ tile transfer press for the realization of the method, ~owhereby in particular the washproofness or the adhesion of 31 the white contrast support on the dark piece of textile, J~respectively, still is particularly unsatisfactory and in 3; addition is appreciably impaired with each washing. The known systems that are usable by means of a one-step method are based on a white, thick transfer foil Board Assigned Page #4 with a thickness of about 400 to 600 ~m which can be im printed by an ink-jet method or a xerographic method and subsequently transferred on a dark piece of textile by means of a transferred press. The disadvantages of this system are in particular the unsatisfactory image quality immediately after the transfer on the piece of textile. The images look faint and blurred. Furthermore, the whole sys tem is comparatively thick, makes an unaesthetic impression ~ (armor-like) and it is not breathable. An additional major 10 disadvantage is the fact that the user who does not have /1 available a transfer press and consequently switches to the I~ use of a commercially available iron is confronted with a /) sustainably impaired adhesion of the transfer foil on the l~ piece of textile. This loss of adhesion is further acceler J~ ated by repeated washings. f~ A further disadvantage of both conventional print systems is their application process on the textile substrate, whereby the application of a contrast background on the piece of textile under markedly high pressure cannot be performed by private persons without adequate equipment. The pressures of at least about 7 bar (= 7xl05 Pal often re quired for this can only be generated by a cost-intensive transfer press, whereby the users are mainly interested in a simple ironing on by means of a commercially available iron. The above mentioned disadvantages did significantly lead to the consequence that the currently sold transfer print systems did not become widely distributed in the mar ket as desired, or were not very successful, respectively. On the contrary there still exists a great need for satis factory systems that do not have the above-mentioned disad vantages. Disclosure of the Invention Hence, it was one objective of the present in vention to provide a textile transfer print system which at Board Assigned Page #5 l least partly avoids the above-mentioned disadvantages. In Z particular, a transfer print for a dark le sup 3 port should be provided which on the one hand ds the 4 desired high contrast, a high resolution, and on the other hand avoids the unsatisfactory washproofness due to insuf ficient adhesion of the transfer nt on the textile sup port, and finally which can be applied on a piece of tex tile as uncomplicated and efficiently as possible i.e. in the course of a one-step method by means of an iron. Furthermore, it was also an objective of the present invention to provide a method for the production of textile transfer print systems for dark textile substrates with high washproofness. Finally, it was an objective of the present in vention to provide a printing process, whereby by means of textile transfer print systems for dark text substrates, graphic presentations with high quality or high washproof ness, respectively, can be applied on textile substrates in a single step. The above-mentioned objectives are resolved ac cording ,to the independent . Preferred embodiments are mentioned in the dependent claims. The ink-jet transfer system according to the present invention comprises or is composed of, respective ly, a carrier material (base layer), an adhesive layer ap plied on the carrier material preferably a hot-melt layer Ll which has dispersed spherical (globular) polyester parti 2S cles of a granular size of less than 30 ~, a white back t~ ground layer being applied on the adhesive layer and at 30 least one ink-receiving layer being applied on the back ~ \ ground layer. The white background layer which is found di 32 rectly on the adhesive layer, according to the present in 33 vention, comprises or is composed of permanently elastic 3, plastics which are non-fusible at ironing temperatures ;s (i.e. up to about 220°C) and which are filled with white Board Assigned Page #6 pigments also non-fusible (up to about 220°C). The elas tic plastics must not melt at ironing temperatures in order not to provide with the adhesive layer, e.g. the hot-melt, which provides the adhesion to the textile substrate, an undesired mixture with impaired (adhesive and covering) properties. Furthermore, the white background has to be elastic in order not to lead to a brittle fracture by subsequent mechanical stresses. Elasticity, in the sense of the present invention, means an expansion of at least 200%, preferably of between 500-1000% and in particular prefera bly of about 800%. Preferred elastic plastics for the white back ground layer are selected from the group comprising the polyurethanes, polyacrylates or polyalkylenes or also natu ral rubber (latex), respectively. The most preferred elas tic astics contain or are composed of polyurethanes. 11 Suitable pigments are only those which do not r 8 melt at ironing on temperatures. The filled white layer or the polymers contained therein, respectively, such as e.g. polyurethane must not melt, because otherwise the white pigments would sink or penetrate, respectively, into the textile substrate. Associated with this would be a reduc tion or even a destruction, respectively, of the white background color which according to the invention shall be provided to provide a background for dark prints. Particu larly preferred white gments are inorganic pigments se lected from the group comprising BaS04' ZnS, Ti02 , ZnO, SbO. Also organic pigments are usable for the white background layer as long as are non-fusible at ironing on temper 30 atures. These pigments can be blended alone or also in a " mixture with other non-fusible (up to 220°C) carrier agents 2tsuch as for example silicates or aluminates. 33 Thus, the present invention succeeds in provid 3~ ing a transfer system which has a white background layer in 3S the print system itself, i.e. between the adhesive layer Board Assigned Page #7 \ and the ink-receiving layer, whereby the entire system, in 2 spite of the non-fusible white background layer, surpris 3 ingly fulfills the following requirements: a) All of the 4 chemically different layers are compatible, particular chemically, in the course of the coating process, as well as the melting process (the ironing onto the textile substrate). There occurs no beading or de tachment, respectively, of the white back ground layer from the adhesive layer and/or the ink-receiving layer from the white back ground layer. b) The 4 chemically different layers furthermore show a good adhesion to each other after pro duction of the transfer system so that there is no splintering off or detachment, respec tively, of single layers of the transfer sys tem that is ironed on the textile substrate. c) The transfer system shows also an excellent adhesion and elasticity on the textile sub strate, particularly after ironing on the textile substrate. Said elasticity is of great importance since the ironed-on_transfer system should not become brittle and should not effect a sustainable impairment of the graphic presentation on the textile sub strate. Particularly in case of sports stresses (e.g. pulling at or crumpling of the T-shirt, respectively) the image imprinted on the textile support has to adhere tightly. d} Finally, the inventive transfer system is washable as a composite on the textile sub strate without adversely affecting the color fastness as well as the adhesion on the tex tile substrate. Board Assigned Page #8 ~ The glued lamellar structure is in a way a Z sandwich structure in which the white background layer is 3 glued to the textile substrate, whereby no mixing of the ~ background layer with the adhesive layer, e.g. a hot-melt ~ layer, by a melting process is possible and the entire sys tem is nevertheless flexible enough that the graphic presentation printed on the ink-receiving layer cannot be detached by mechanical stresses. The adhesive layer has to be essentially or completely fusible and must only be adhesive in a fused condition. In a very particularly preferred embodiment, the adhesive layer which is found directly on the carrier mate rial is a pure hot-melt layer. The hot-melt layer is essen tially a wax-like polymer which is easily fusible and thus can for example be transferred onto the textile substrate together with the imprinted ink-receiving layer by ironing \"1 on. Due to its wax-like properties, the hot-melt layer pri 1& marily effects the adhesion to the textile substrate. On \4 the other hand, the hot-melt layer also has to mediate a to good adhesion to the white background layer which is chemi 2\ cally totally different (not wax-like, nonfusible). This is L£.. inventively achieved in that in the hot-melt layer, very l} small spherical polyester particles of a granular size of t~ less than 30 ~m are spersed. These spherical polyester t5 particles in turn are chemically more related to the white ~~ background layer (than the pure hot-melt wax components) so t1 that during melting they can form or enhance, respectively, 2~ the adhesion to the white background layer. A particle size of less than 30 ~m is required so that the particles do not bulge out from the layer and thus cause problems during coating. The spherical polyester particles are preferably obtained for example by stirring in cryo-ground polyester together with the wax-like hot-melt compounds during the production of a dispersion and melting small drops of up to 30 ~m (emulsion). After the cooling, the drops solidi and Board Assigned Page #9 small beads develop, i.e., a dispersion. A preferred hot melt compound is for example an ethylene acrylic acid co polymer or a PU dispersion. Together with the spherical ,.. polyester particles of a granular size of less than 30 ~, said compound is processed to a hot-melt layer dispersion. As adhesive layer, besides a pure hot-melt, al so a hot-melt adhesive dissolved in a solvent can be used. For example a solvent-containing adhesive based on polyam ides or polyethylenes which on the one hand effects a good adhesion to the textile substrate and on the other hand to the white background layer are suitable for the realization of the present invention. In a preferred embodiment, the adhesive layer, however, contains or is composed of a pure hot-melt since said hot-melt forms the desired adhesion to the white back ground layer and to the textile substrate by means of a comparatively simple external controlling means, i.e. by means of ironing on, in a convenient but efficient manner. The ink-receiving layer (ink layer) is situated on the white background layer and primarily comprises a highly porous pigment and a binder. The highly porous pig ment provides on the one hand a purely mechanical uptake of the ink during printing of the desired graphic presentation whereby a maximal porosity ensures an especially high ab sorbability. Binders are necessary to bind the highly po rous pigments on the product surface to allow the pro cessing (imprinting) of the ink-jet transfer system. In principle, all known, mainly highly porous pigments are suitable as ink-receiving layer for the pur poses of the present invention: Examples are polyesters, PE-wax, PE-powders, ethylene-VAC copolymers, nylon, epoxy compounds. Suitable as binders are polyacrylates, butadiene copolymers, ethylene-VAC copolymers, nylon, ni trile rubber, PVC, PVAC, ethylene-acrylate-copolymers. Board Assigned Page #10 Preferably the at least one ink-receiving layer comprises a mixture of a highly porous pigment and a binder whereby more preferably the molecules of the highly porous pigment and optionally of the binder and optionally of the adhesive , e.g. the hot-melt layer, are capable of forming essentially covalent bonds to the dyestuff mole cules of the ink. This has the advantage that the respec tive dyestuffs, after printing on the textile substrate, for instance by ironing on, are no longer primarily mechan ically bonded, but as a result of - essentially covalent  bonds are chemically bonded to the molecules of the pigment and of the binder and optionally of the hot-melt. This is achieved in that the molecules of the pigment and optional ly of the binder and optionally of the hot-melt have avail able reactive groups that are capable of forming covalent bonds to the also reactive groups of the dyestuff molecules of the ink. The essentially covalent bonds between the dye stuff molecules of the ink and the molecules of the pigment as well as of the binder are, among others, formed upon providing energy, for instance by ironing on (at about 190°C) the inventive ink-jet transfer system on the textile substrate. For the printing of the ink-jet transfer sys for instance by means of an ink-jet printer, in the market, usually acid dyestuffs are used in printer inks, for example azo-dyestuffs according to formula I. OHw I NHR N=N ()Â-I x y z Board Assigned Page #11 w COOH x 0:::; H or COOH y & z H, COOH or S03H R H, CH2COOH or CH2CH2COOH (I) The molecules of the ink dyestuffs are primari ly present as anions in solution and also have available reactive groups which allow the formation of chemical bonds to the reactive groups of the pigment molecules as well as optionally the binder molecules. The reactive groups are usually one or more sulfonate groups or carboxylate groups per dyestuff molecule. Under suitable conditions, for in stance through heating during the ironing on of the ink-jet transfer system onto the textile substrate, covalent or al so rather ionic bonds or intermediary valence bonds, re spectively, can be formed between said sulfonate groups or carboxylate groups, respectively, and the reactive groups, for example amino groups, of the pigment or binder, respec tively. But in particular, the covalent bonds of the dye stuff molecules to the molecules of the ink-receiving lay er, with formation of e.g. sulfonamides ( S02NH-R) or amide groups (-CONH-R), respectively, (besides rather amphoteric S03 NH3+-R groups) are particularly preferred. As an example, the poly[l,2-bis(aminomethyl cyclohexyl)ethane-adipic acid amide] of the formula (II) is mentioned which generates essentially covalent bonds (sul fonamide groups or acid amide groups, respectively) with its terminal amino groups upon reacting with the acid groups of an azo-dyestuff. (II) Board Assigned Page #12 Modes for ca out the ion In a preferred embodiment, the ink-receiving layer of the inventive ink-jet transfer system is composed of a highly porous pigment and a binder, whereby at least one of the two components, in particular the pigment being present in bigger amounts has available reactive amino groups that are capable of forming essentially covalent bonds to the dyestuff molecules of the liquid ink. In a particularly preferred embodiment of the present invention, the ink-receiving layer comprises a highly porous polyamide pigment and a binder composed of a soluble polyamide, whereby the terminal, free amino groups of the polyamide pigment and of the polyamide binder are capable of fixing reactive groups, for example sulfonate groups or carboxylate groups of the dyestuff molecules. Be cause of that, with the pigment component as well as the binder component, a chemical fixation of the dyestuff mole cules can be achieved. Besides the inventive requirement of the capa bility of the formation of essentially covalent bonds be tween the dyestuff molecules of the ink and the molecules of the pigment as well as the binder, the ink-jet transfer system according to the present invention has to have a high absorption capacity or uptake, respectively, of ink in order to guarantee a clear print image. This requirement is achieved by providing a pigment, preferably a polyamide pigment with a high porosity. Preferred polyamide pigments which are used for the ink-jet transfer systems according to the present in vention preferably display a spherical, for instance a bular geometry and an interior surface which is as high as possible. The granular sizes of the used polyamide pigments are in a range of about 2 ~ and about 45 ~m, whereby a Board Assigned Page #13 range of 2 to 10 ~m is particularly preferred. The bigger the granular size of the polyamide pigments, the more the surface of said pigments is closed and thus the ink receiving capacity is reduced or even rendered impossible, respectively. The interior surface of the highly porous pigment amounts to at least about 15 m2 /g; preferably it is between about 20-30 m2/g. It turned out that in particular a polyamide pigment with the trade name "Orgasol" displays the required properties, in particular the high-grade porosity. A highly porous polyamide pigment with an inte rior surface of at least about 15 m2 /g and a granular size of about 2 ~ and about 45 ~ is obtained by means of an anionic polyaddition and a subsequent controlled precipita tion process. In contrast to the conventional production methods in which a polyamide condensation product, for ex ample as a granulate, is prepared, which is then milled, the polyamide pigments are actually grown and the growth of the pigments is ceased upon reaching the desired granular size. 85-95 % of the polyamide pigments thus obtained show the desired form and granular size, whereby only maximally 15 % have a smaller or bigger granular size. For an ink-receiving layer with highly porous polyamides being used as pigments, the binder preferably is composed of a polyamide as well. The polyamide used as a binder is different concerning its properties from the pol yamide gment insofar as it is employed as a solution and thus does not have to comply with specific form require ments. The use of polyamide as a binder is therefore less critical. It has only to be soluble in a suitable solvent, for instance alcohol or a alcohol-water mixture, respec tively, and preferably has available free terminal amino groups by means of which dyestuff molecules, for example sulfonate groups of azo-dyestuffs or ester groups can be fixed. Board Assigned Page #14 The ratio of the highly porous pigment and the binder in the ink-receiving layer of the inventive ink-jet transfer system amounts to between about 5:1 and 1:1, pref erably 3:1 and 2:1 and very much preferred 2.4:1. The hot-melt layer which is preferably used in the ink-jet transfer system according to the present inven tion as adhesive layer is found directly on the removable carrier material and serves to transfer the graphic presen tation imprinted by the ink-jet printer on the textile sub strate and to ensure an adhesion to the white background layer. Said transfer is, for instance, effected by a cold copy, i.e. by ironing on, cooling down and removing the \3 carrier layer (baking paper). During the ironing on, the ,~ hot-melt layer and the ink-jet receiving layer, but not the 15 white background layer are molten. This way, the image im I~ printed on the ink-receiving layer is transferred on the 11 textile substrate without any fusing-associated distor \%tions. The hot-melt preferably used as adhesive layer in contrast to the highly porous pigment, binder as well as the background layer, is essentially wax-like, i.e. it can be fused. Usually, hot-melts melt in a range of about 100 120°C while the highly porous pigments preferably melt in a range of 120-180°C, preferably 140-160°C. A usual hot-melt is for instance an ethylene acrylic acid copolymer disper sion. Further additives can be contained in the ink jet transfer system according to the present invention, however, upon the use of such additives, it has to be paid attention that their use does not impair the washproofness of the eventually obtained transfer print. Because of pro cess-technology reasons, for instance, it is reasonable to use a dispers additive for organic pigments in the prep aration of the inventive ink-jet transfer system. Board Assigned Page #15 As a support (cover layer) for the cold copy, nearly any separating paper can be used, preferably a heat resisting paper, for example a silicone paper is used. Besides the ink-jet transfer system itself, an additional aspect of the present invention is a method for ~ its preparation. The coating method comprises the following 1 steps: & a) application of an adhesive layer, preferably ~ a hot-melt layer, which has dispersed spherical polyester 10 particles of a granular size of less than 30 ~ onto a car \ 1 rier material, for instance silicone paper, by means of a (2 coating means for instance a coating machine, whereby a 13 layer thickness of about 30 to 40 ~m is adjusted, thereaf l'i ter drying the hot-melt layer, and \~ b) application of a white background layer com \~ posed of elastic plastics which are non-fusible at ironing II on temperatures (i.e. up to about 220°C), and which are filled with white, preferably inorganic, pigments onto the hot-melt layer, preferably with a resulting layer thickness of about 20 35 ~, c) application of at least one ink-receiving layer dispersion onto the white background layer, and d) drying the ink-jet transfer system. The double/multiple application of the ink receiving layer according to step c) provides the advantage that a smooth and even surface as well as an ink-receiving layer with a balanced thickness is -formed, whereby the printing process or the resulting print image, respective ly, is influenced in a positive way. First, the graphic presentation to be applied onto the textile substrate is laterally correctly printed onto the ink-jet transfer system thus obtained by a usual printer, e.g. an ink-jet printer (ink-jet-plotter), cut out, removed from the support (e.g. silicone paper), cov- Board Assigned Page #16 \ ered with baking paper and afterwards ironed onto the de l sired textile substrate, for instance a T-shirt, at a tem 3 perature of between about 160 and 220°C, preferably of ~ 170°C, during at least 10 seconds. The lowest is the carrier material which is removed and discarded before the application of the graphic presentation. As the preferred cover paper, a heat-resistant silicone paper (baking paper) is used. The printed graphic presentation obtained in such a way (cold copy) is smooth and faint. In the following, the present invention shall be illustrated by two examples whereby the examples are not to be construed as limiting the scope of protection. 1 ion of an ink et transfer stem In a first step, the hot-melt layer is applied onto a carrier material: Thereby, a silicone paper of a layer thickness of about 0.1 mm is coated with an ethylene acrylic acid copolymer containing dispersed spherical poly ester particles of a granular size of between 5-25 ~. The ratio of ethylene acryl acid copolymer and spherical pol yester particles is about 60:40 and the resulting layer thickness of the hot-melt layer is about 30 ~m. Subsequently, a white background layer (polyu rethane foil) with a thickness of about 40 ~ containing about 15 weight-% Ti02 is applied onto the silicone paper coated with the hot-melt. On said elastic background layer of polyure thane/Ti02 .a dispersion containing the ink-receiving layer is applied in two steps. In the first step, a layer thick ness of 15 ~m is applied and in the second step, a layer thickness of 15 ~m is applied, whereby a total layer thick ness of the ink-receiving layer of 30 ~ results. Board Assigned Page #17 The ink-receiving layer was previously prepared as follows: an ethanol/water mixture in the ratio of 3:1 is placed in a vessel and a soluble polyamide binder is dis solved therein under heating to 45°C. Afterwards the highly S" porous polyamide pigment "Orgasol 3501 EX D NAT1" with a granular size of 10 ~ as well as an interior surface of about 25 m2 /g pigment is dispersed in the solution. In order to stabilize the dispersion, a dis persing additive for organic pigments commercialized by the \0 Company Coatex with the product designation COADIS 123K is introduced and the dispersion is stirred during 10 minutes at room temperature. On the coating machine, the solvent is allowed to evaporate in order to obtain a solid ink-receiving layer ,S on which the desired graphic presentation can be printed by means of an ink-jet printer. The desired foils can be cut arbitrarily ac cording to the required needs. Example 2 20 Use of an ink-jet transfer system for printing The ink-jet transfer system prepared in example 1 is used in order to print a graphic presentation on a T shirt. Thereby, in a first step, the desired electronically processible and stored graphic presentation is printed by a ~~ computer by means of an ink-jet printer in a laterally cor rect way onto the sheet which has been obtained as the ink jet transfer system in example 1. Afterwards, the print is removed and put with the white side onto the desired side of the selected T 30 shirt and ironed on by means of a hot iron (baking paper + 31 temperature of about 190°C) during 10 seconds. Afterwards, 32 the T-shirt thus processed is cooled down to about room Board Assigned Page #18 temperature and the baking paper, i.e. the silicone paper is removed. The image thus obtained is shining and matt. While in the present invention, preferred em bodiments of the invention are described, it has clearly to be pointed out that the invention is not limited thereto and may be otherwise practiced in the scope of the follow ing claims. Board Assigned Page #19 Claims 1. An ink-jet transfer system, characterized in that it comprises or is composed of a) a carrier material, b) an adhesive layer being applied onto said carrier material which has dispersed spherical polyester particles of a granular size of less than 30 ~m, ~ c) a white background layer composed of elastic q plastics which are non-fusible at temperatures up to 220°C and which are filled with white inorganic pigments being applied onto the hot-melt layer and, d) at least one ink-receiving layer. 2. The ink-jet transfer system according to c I, characterized in that the molecules of the ink- receiving layer and/or of the binder contained therein are capable of forming chemical, particularly covalent bonds to the dyestuff molecules of the ink. 3. The ink-jet transfer system according to claim 1 or 2, characterized in that the ink-receiving layer has available reactive groups which are capable of forming essentially covalent bonds to the dyestuff molecules, par ticularly to azo-dyestuff molecules or acid-dyestuff mole cules of the ink. 4. The ink-jet transfer system according to claim 3, characterized in that the reactive groups are ami no groups. 5. The ink-jet transfer system according to one of the claims 1 to 4, characterized in that the ink receiving layer contains or is composed of a highly porous polyamide pigment with a surface of at least about 15 m2 /g, preferably of about 20-30 m2 /g and a mean granular size of approximately about 2 to 25 ~, preferably about 2-10 ~, as well as a soluble polyamide as binder and that the hot melt contains or is composed of a polyester. Board Assigned Page #20 6. The ink-jet transfer system according to claim 5, characterized in that the highly porous polyamide pigment is obtained by means of an anionic poly-addition and subsequent controlled precipitation whereby the granu lar sizes are adjusted by ceasing the precipitation. 7. The ink-jet transfer system according to one of the claims 1 to 6, characterized in that the ratio be tween the porous pigment and the binder is between about 5:1 and 1:1, preferably 3:1 and 2:1 and icularly pre ferred 2.4:1. 8. The ink-jet transfer system according to one of the claims 1 to 7, characterized in that the elastic plastics of the white background layer are selected from the group comprising polyurethanes, polyacrylates, poly alkylenes, particularly preferred polyurethanes. 9. The ink-jet transfer system according to one of the claims 1 to 8, characterized in that the pigments in the white background layer are selected from the group com prising BaS04' ZnS, , ZnO, SbO. 10. The ink-jet transfer system according to one of the claims 1 to 9, characterized in that the adhe sive layer is a hot-melt layer. 11. The ink-jet transfer system according to claim 10, characterized in that the hot-melt r contains or is composed of a mixture a blend of an ethylene acrylic acid copolymer and polyester particles of a granular size of less than or equal to 20 ~. 12. The ink-jet transfer system according to one of the claims 1 to 11, characterized in that the carri er layer is composed of a heat-resistant separating paper, preferably silicone paper. 13. The ink-jet transfer system according to one of the claims 1 to 12, characterized in that it fur thermore contains a dispersing additive for organic pig ments. Board Assigned Page #21 14. Method for the preparation of an ink-jet transfer system according to one of the cIa I to 13, comprising the following steps: a) application of an adhesive layer having dis persed spherical polyester particles of a granular size of less than 30 ~ onto a carrier material whereby a layer thickness of about 30 to 40 ~ is adjusted, ~ b) application of a white background layer com ~ posed of elastic plastics non-fusible at temperatures up to 10 220°C and filled with white ino pigments onto the hot-melt layer, c) appl ion of at least one ink-receiving layer onto said white background layer so that a total thickness of the ink-receiving layer of about 20 to 35 ~ is achieved and, d) letting the solvent evaporate during coat ing. 15. Method according to claim 14, characterized in that two ink-receiving layers are applied. 16. Method for nting textile substrates, characterized in that a graphic presentation is printed laterally correct by a computer via a printer on the ink jet transfer system according to one of the claims 1 to 13 and thereafter is hot iron pressed onto the textile sub strate and in that the carrier material is removed cold af ter cooling down. Board Assigned Page #22 Abstract An ink-jet transfer system is disclosed, as well as a transfer printed product which is highly wash resistant, colour-fast and environment-friendly, and a pro cess for producing the same and its use in a printing pro cess by means of the disclosed ink-jet transfer system. The disclosed ink-jet transfer system has a substrate, a hot melt applied on the substrate and at least one ink absorbing layer which comprises a mixture of a highly po rous pigment and a binder. The molecules of the pigment and if required of the binder and hot-melt layer can form chem ical bonds with the dyeing molecules of the ink. Board Assigned Page #23 Copy with citationCopy as parenthetical citation