Ex Parte Furuhata

Patent Trials and Appeals Board

Jul 9, 2019

14443395 - (D) (P.T.A.B. Jul. 9, 2019)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE
14/443,395 05/18/2015
31561
JCIPRNET
7590
P.O. Box 600 Taipei Guting
Taipei City, 10099
TAIWAN
07/11/2019
FIRST NAMED INVENTOR
Tomotaka Furuhata
UNITED STATES DEPARTMENT OF COMMERCE
United States Patent and Trademark Office
Address: COMMISSIONER FOR PATENTS
P.O. Box 1450
Alexandria, Virginia 22313-1450
www .uspto.gov
ATTORNEY DOCKET NO. CONFIRMATION NO.
57372-US-988-PCT 6226
EXAMINER
WALTERS JR, ROBERTS
ART UNIT PAPER NUMBER
1717
NOTIFICATION DATE DELIVERY MODE
07/11/2019 ELECTRONIC
Please find below and/or attached an Office communication concerning this application or proceeding.
The time period for reply, if any, is set in the attached communication.
Notice of the Office communication was sent electronically on above-indicated "Notification Date" to the
following e-mail address(es):
USA@JCIPGROUP.COM
Belinda@JCIPGROUP.COM
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Exparte TOMOTAKA FURUHATA
Appeal2018-007719
Application 14/443,395
Technology Center 1700
Before LINDA M. GAUDETTE, CHRISTOPHER C. KENNEDY, and
JEFFREY R. SNAY, Administrative Patent Judges.
GAUDETTE, Administrative Patent Judge.
DECISION ON APPEAL 1
1 This Decision includes citations to the following documents: Specification filed
May 18, 2015 ("Spec."); Non-Final Office Action dated October 31, 201 7 ("Act.");
Appeal Brief filed April 19, 2018 ("Appeal Br."); Examiner's Answer dated May
22, 2018 ("Ans."); and Reply Brief filed July 20, 2018 ("Reply Br.").
Appeal2018-007719
Application 14/443,395
The Appellant2 appeals under 35 U.S.C. § 134(a) from the Examiner's
decision twice rejecting claims 1-5, 7, and 8 under 35 U.S.C. § 103(a).3
We AFFIRM.
The invention relates to a method of forming a pattern layer on a fabric that
results in a product having improved fastness to washing. See Spec. ,-J 6. Claim 1 is
representative of the claims on appeal, and is reproduced below.
1. A printing method, comprising:
a forming step of forming a solvent UV ink layer on a printing
target object by an inkjet printing method;
a drying step of heating the solvent UV ink layer to volatilize a
solvent contained in the solvent UV ink layer while maintain[ing] a
stickiness of the solvent UV ink layer;
a decorating step of adhering a decorative material to the
solvent UV ink layer after the drying step while maintaining the
stickiness of the solvent UV ink layer or forming a decorative layer
containing the decorative material on the solvent UV ink layer after
the drying step while maintaining the stickiness of the solvent UV ink
layer; and
a curing step of curing the decorated solvent UV ink layer by
ultraviolet irradiation,
wherein the decorative material is lacquerware material,
wherein the decorative layer containing the decorative material
is selected from at least one of a metallic thin film, a sheet containing
particles, and a sheet containing fragments of materials.
Appeal Br. 13 (Claims Appendix).
The Examiner rejected claims 1-5, 7, and 8 under 35 U.S.C. § 103(a) as
follows: (1) claims 1-4, 7, and 8 over Suga (JP 08-207500, published August 13,
2 The Appellant, Mimaki Engineering Co., Ltd., identifies itself and the inventor as
the real parties in interest. Appeal Br. 1.
3 We have jurisdiction under 35 U.S.C. § 6(b).
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Appeal2018-007719
Application 14/443,395
1996 (machine translation)) in view of Hansson (WO 01/47724 Al, published July
5, 2001); and (2) claim 5 over Suga in view of Hansson and Firth (US 3,545,999,
issued December 8, 1970).
Suga discloses "a transfer sheet that is [ said to be] excellent in mar
resistance, abrasion resistance, chemical resistance, flexibility, formability,
transparency, etc." Suga Abstract. Suga discloses the sheet is made by gravure
coating a substrate and blowing hot air to dry the solvent in the coating, thereby
forming a film that is in a set-to-touch, but uncured, state. Id. ,-i 89. Suga discloses
gravure printing an abstract pattern on the film using an acrylic ink to form a
decorative layer, followed by irradiating to cure the coating, e.g., by UV rays. Id.
,-J,-J 38, 92-93. Suga discloses that the coating comprises spherical particles
dispersed in a binder comprising a cross-linking resin. Id. ,-i 13. According to Suga,
the spherical particles improve the abrasion resistance of the surface resin layer. Id.
Hansson discloses a process for manufacturing a decorative surface element
comprising a base layer and a decorative upper surface. Hansson Abstract.
Hansson discloses applying a radiation curing lacquer that may include hard
particles (id. at 8, first para.) by means of an ink-jet printer (id. at 8, last para.) in a
predetermined pattern on a decorative upper surface of the element (id. at 9, step i).
Hansson discloses sprinkling hard particles "on the still sticky printed lacquer,"
and then exposing the lacquer "to radiation so that it cures." Id. at 9, steps ii and iii.
A layer of UV or electron beam curing lacquer is then applied on the decorative
upper surface so the particles become embedded in the lacquer. Id. at 9-10, step v.
The Examiner found Suga discloses the invention as recited in claim 1, with
the exceptions that "Suga fails to teach inkjet printing, the drying step maintaining
a stickiness of the UV ink layer after drying, and then performing the decorating
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Appeal2018-007719
Application 14/443,395
step while maintaining a stickiness of the UV ink layer after drying, wherein the
decorative material is lacquerware material." Act. 3-4. The Examiner found
"Hansson teaches forming an abrasion resistant coating by inkjet printing a first
layer of a UV curable lacquer comprising similar particles, and then applying while
the UV curable lacquer is still sticky further particles ... [that] are comparable to
lacquerware material." Id. at 4. The Examiner found one of ordinary skill in the art
would have modified "Suga's method by inkjet printing the UV ink layer,
maintaining a stickiness of the UV ink layer after drying, and applying further
lacquerware materials to the still sticky UV ink layer as disclosed by Hansson" in
order to provide additional abrasion resistant properties to the cured film. Id.
The Appellant requests reversal of the Examiner's rejections for the
following three reasons: (1) Suga is non-analogous art; (2) the combination of
Suga and Hansson fails to disclose or suggest all claim 1 limitations; and
(3) Hansson teaches away from the claimed invention. Id. at 5. The Appellant does
not present arguments in support of patentability of any dependent claim or claim
grouping. See generally Appeal Br. 5-12; see also id. at 4 ("For the ground of
rejection contested by Appellants in this appeal, it is proper to treat claims 1-5 and
7-8 as a group. Independent claim 1 may be taken as a representative for the issue
on appeal.").
We tum first to the Appellant's argument that Suga is non-analogous art.
"Two separate tests define the scope of analogous prior art: (1) whether the art is
from the same field of endeavor, regardless of the problem addressed and, (2) if the
reference is not within the field of the inventor's endeavor, whether the reference
still is reasonably pertinent to the particular problem with which the inventor is
involved." In re Klein, 647 F.3d 1343, 1348 (Fed. Cir. 2011) (quoting In re Bigio,
381 F.3d 1320, 1325 (Fed. Cir. 2004)).
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Appeal2018-007719
Application 14/443,395
The Appellant argues that Suga should be regarded as nonanalogous art
because "the drying step of Suga provides a surface without stickiness which is
unreasonably pertinent to the problem faced by the inventor." Appeal Br. 7. The
Appellant's argument is not persuasive, because the Appellant has not explained
why the Examiner erred in finding that Suga satisfies the first analogous art test,
i.e., Suga is within the field of the inventor's endeavor. Compare Ans. 5 ("[T]he
Examiner notes that appellant's field of endeavor is the preparation of a decorative
coated product (see appellant's specification at paragraph 0070). Suga is also
directed at the formation of an abrasion resistant decorative coated product
(0009)."), with Reply Br. 1-2 (arguing Suga's fabricating method is different than
that of the invention and that Suga does not maintain stickiness of the solvent ink
layer after drying).
We tum next to the Appellant's argument that the combination of Suga and
Hansson fails to disclose or suggest all claim 1 limitations.
The Appellant argues that Suga does not teach performing a decorating step
while maintaining a stickiness of the UV ink layer after drying and that Hansson
applies a radiation curing lacquer by inkjet printing prior to a drying step. Appeal
Br. 8-9. The Appellant thus contends that neither reference, alone or in
combination, discloses or suggests adhering a decorative material to a solvent UV
ink layer after a drying step that maintains a stickiness of the layer. Id. The
Appellant's argument is not persuasive because it fails to address the Examiner's
findings as to the understanding of the ordinary artisan upon review of the
combined teachings of the references.
Suga discloses forming a solvent ink layer on a substrate. See Suga ,-J 89.
Although Suga does not disclose applying the layer by inkjet printing, the
Examiner found Hansson teaches that inkjet printing is a suitable method for
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Appeal2018-007719
Application 14/443,395
application of such layer to a substrate. Act. 4. The Appellant has not identified
error in this finding. Suga discloses drying the solvent in a coating to achieve a
film that is in a set-to-touch, but uncured, state. Suga ,i 89. As acknowledged by
the Examiner, Suga does not state explicitly that the film is "sticky." Act. 3-4.
However, the Examiner had a reasonable basis for finding that Suga's uncured
layer possesses a degree of stickiness that is similar to that of the claimed UV ink
layer because, as found by the Examiner (Act. 3), Suga utilizes the same solvents
used in the present invention, and, in forming a film that is set-to-touch, dries the
ink layer at a temperature within the same range used in the invention. Compare
Spec. ,i,i 11-16, with Suga ,i,i 89, 91. Moreover, Hansson's disclosure of
maintaining a coating in a sticky state to enable adherance of hard particles that are
sprinkled on the lacquer would have suggested to the ordinary artisan that Suga's
drying and solvent conditions should be adjusted such that the layer remains sticky
during the subsequent application of additional lacquer particles-for the purpose
of providing additional abrasion resistant properties as taught by Hansson-but
prior to Suga' s final curing step. See Act. 4.
In the Reply Brief, the Appellant cites to a document entitled "[G]lossary of
terms for coating materials," attached to the Reply Brief as "Evidence I" to support
an argument that the term "set-to-touch," as used to describe Suga's film, means
"without stickiness." Reply Br. 2. We do not find this evidence outweighs the
Examiner's evidence of obviousness, discussed in the preceding paragraph, which
also relies on Hansson' s explicit disclosure of applying decorative material to a
sticky layer. Moreover, as noted by the Examiner, the Specification does not define
the term "stickiness" (Ans. 5) and the only degree of measure provided for this
relative term is "stickiness necessary for the decorating process, while effectively
preventing smearing of the solvent UV ink layer" (see, e.g., Spec. ,i 15).
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Application 14/443,395
Turning to the Appellant's final argument, we are also unpersuaded that the
Examiner failed to appreciate the argument that Hansson teaches away from the
claimed invention. The Appellant contends Hansson teaches away from the
invention because it does not adhere the lacquerware material after a drying step.
Appeal Br. 10. The Appellant has not explained, however, why the ordinary artisan
would have been discouraged from adhering the material after a drying step upon
considering the combination of Hansson and Suga, which discloses such drying
step. See Ans. 7. We decline to consider the arguments advanced for the first time
in the Reply Brief (see Reply Br. 4), because the Appellant has not explained why
these arguments could not have been raised in the Appeal Brief. See Ex parte
Borden, 93 USPQ2d 1473, 1474 (Bd. Pat. App. & Int. 2010) (informative) ("The
reply brief is not an opportunity to make arguments that could have been made
during prosecution, but were not. Nor is the reply brief an opportunity to make
arguments that could have been made in the principal brief on appeal to rebut the
Examiner's rejections, but were not").
CONCLUSION
We have considered the Appellant's arguments that (1) Suga is non-
analogous art, (2) the combination of Suga and Hansson fails to disclose or suggest
all claim 1 limitations, and (3) Hansson teaches away from the claimed invention.
However, we are not convinced of reversible error in the Examiner's conclusion of
obviousness as to claims 1-5, 7, and 8.
ORDER
1-4, 7, and 8 1-4, 7, and 8
5 a, Hansson, and Firth 5
Outcome 1-5, 7, and 8
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Appeal2018-007719
Application 14/443,395
No time period for taking any subsequent action in connection with this
appeal may be extended under 37 C.F.R. § l.136(a)(l)(iv).
AFFIRMED
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