Ex Parte Katsumoto et al

Board of Patent Appeals and Interferences

Mar 14, 2012

10349325 (B.P.A.I. Mar. 14, 2012)

UNITED STATES PATENT AND TRADEMARK OFFICE
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BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
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Ex parte RYUICHI KATSUMOTO, SHOTARO OGAWA,
YOSHIHITO HODOSAWA, HIDEO NAGANO,
and TADAHIRO KEGASAWA
________________

Appeal 2010-002320
Application 10/349,325
Technology Center 2800
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Before SCOTT R. BOALICK, THOMAS S. HAHN, and
STANLEY M. WEINBERG, Administrative Patent Judges.

WEINBERG, Administrative Patent Judge.

DECISION ON APPEAL

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STATEMENT OF THE CASE
Summary
Appellants appeal under 35 U.S.C. § 134(a) from the Examiner’s
rejection of claims 1, 2, 5-10, 13, 14, 19, and 22.1
Claims 1, 2, 5-10, 13, 14, 19, and 22 stand rejected under 35 U.S.C.
§ 103(a) as unpatentable over Simons (US 4,978,652; Dec. 18, 1990) in
view of Huffaker (US 3,462,226; Aug. 19, 1969).
We affirm-in-part.
The Claimed Invention
Independent claim 1, representative of claims 1, 2, 5, 9, 10, 13, 14,
22,2 reads as follows:
1. A method of producing a pattern member comprising the steps of:
by applying a color ink on each of a plurality of films and drying the
color ink, producing a plurality of single color films each having a different
color of a plurality of colors and a color ink layer formed on a surface of
each single color film; and
transferring a part of a color ink layer to a substrate to produce a
pattern member having a multi-color pattern made of color inks of the
plurality of colors formed on the substrate by repeating, at frequency
corresponding to the number of the plurality of colors, an operation of
overlapping one of the plurality of single color films having one color on the
substrate such that a color ink layer of the single color film comes in contact
with the substrate, and then, pressing the overlapped substrate and single

1 On September 9, 2008, Appellant cancelled claims 11 and 15 in view of
the Examiner's objection to these claims as being identical to claims 9 and
13. Reply Br. 2; Ans. 5. The Amendment was entered as reported in the
June 2, 2009 Advisory Action.
2 Appellants argue claims 1, 2, 5-10, 13, 14, 19, and 22 together as a group.
See Br. 15, 17, 19. Accordingly, we select independent claim 1 as
representative of all claims except claims 6-8 and 19 which Appellants argue
separately (Br. 19-23) and which are discussed separately below. See 37
C.F.R. § 41.37(c)(1)(vii).
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color film by a pressing member having a convex portion of given pattern
formed on its surface, to transfer a portion of the color ink layer
corresponding to a pattern of the convex portion to the substrate,
wherein the step of transferring a part of a color ink layer to a
substrate comprises performing transfer using the pressing member having
the convex portion of a pattern in a form of a stripe formed on the surface of
the pressing member.

Issue on Appeal
Does the combination of Simons and Huffaker render obvious the
subject matter of claim 1, including the limitations of "a pressing member
having a convex portion of given pattern formed on its surface" and
"wherein the step of transferring a part of a color ink layer to a substrate
comprises performing transfer using the pressing member having the convex
portion of a pattern in a form of a stripe formed on the surface of the
pressing member"?

ANALYSIS
I.
In claim 1, Appellants argue that Simons does not teach or suggest
the limitation of “a pressing member having a convex portion of given
pattern formed on its surface” (Br. 15-16) or the limitation “wherein the step
of transferring a part of a color ink layer to a substrate comprises performing
transfer using the pressing member having the convex portion of a pattern in
a form of a stripe formed on the surface of the pressing member” (Br. 15).
Appellants contend that “[t]he aspect of Simons cited by the Examiner
does not pertain to a pressing member” (id.) and that “a pressing member
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with a convex portion having a pattern . . . is clearly patentable subject
matter” (Br. 16 (emphasis omitted)).
Citing column 3, lines 8-66, and column 5, line 31, to column 6, line
31, however, the Examiner found that Simons’s embossing roller is a
pressing member having a convex portion (Ans. 3-4) (“[T]he recited
pressing member having a convex portion of a pattern is a roller which has
the same structure as the embossing roller taught by Simons.”). See col. 3,
ll. 8-10 (the embossed surface is applied to the back of the donor element
while it is in contact with the receiver element), 19-20, 25-29; col. 5, l. 61;
col. 6, ll. 26-29. Moreover, citing column 5, line 60, to column 6, line 11, of
Simons, Appellants effectively concede that Simons teaches a pressing
member having a convex portion by stating that “Simon[s] discloses an
embossed copper roller” (Br. 16 (emphasis added); Reply Br. 5) and failing
to identify any convincing evidence contradicting the Examiner’s finding
that a roller is convex shaped. Accordingly, we agree with the Examiner’s
finding that Simons teaches a pressing member having a convex portion.
The Examiner also found that there is a pattern on Simons’s
embossing roller as exemplified by the repeating color patterns formed by
color stripes red, green, and blue (RGB) shown at the end of Simons’s
column 2 (Ans. 3). Appellants effectively concede that the convex portion
has a pattern on its surface, stating that “Simons appears to disclose a mosaic
pattern” and citing to column 5, line 60, to column 6, line 11, disclosing the
embossed roller is etched to give an array of raised squares (Br. 15-16;
Reply Br. 5). See also Reply Br. 4 (“An embossed surface[] means a surface
having a relief pattern on its surface.”).
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Then, arguing that Simons does not teach “a pattern in a form of a
stripe is formed on a surface of a pressing member” (Br. 15; Reply Br. 4-
5),”3 Appellants contend that Simons’s mosaic elements illustrated at the
bottom of column 2 “cannot be linear in nature, but rather are rectangular”
(Br. 16) and that Simons’s “pixels of common color are formed on a
diagonal, thereby teaching away from a strip[e] shape pressing member”
(id.; Reply Br. 5). The Examiner agrees that Simons’s pattern is formed by
raised square elements (Ans. 6). See col. 2, ll. 55-57.
The Examiner found, however, that Simons’s arrangement of
diagonally aligned raised square pixels produces diagonal stripes (Ans. 6).
A relevant plain meaning of “stripe” is “a line or long narrow section
differing in color or texture from parts adjoining.” WEBSTER’S SEVENTH
NEW COLLEGIATE DICTIONARY 870 (1963). The bottom of Simons’s column
2 shows diagonal lines or long narrow sections (i.e., stripes) of respectively
different single colors: RGB. Appellants agree that Simons’s repeating
mosaic pattern “consists of a uniform, square, and linear repeating area”
(Reply Br. 4 (emphasis added)).
By arguing that Simons’s common color pixels are formed on a
diagonal and that the diagonal teaches away from a stripe shaped pressing
member, Appellants appear to imply that Simons fails to teach the contested
claim terms because Simons’s horizontal pixels do not form a horizontal

3 Contrary to Appellants’ contention, the Examiner did not concede that
Simons does not teach the claimed pressing member (compare Br. 17 with
Ans. 7). The Examiner also did not assert that a pattern in the form of a
stripe is just a design by those of ordinary skill in the art in order to achieve
a desired appearance on the finished art nor assert that a pattern design does
not carry any patentable weight (compare Br. 16 with Ans. 6).
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stripe having a common color. The claim, however, is not limited to a
horizontal stripe of a common color. The claim broadly recites “a pattern in
a form of a stripe,” thereby encompassing Simons’s diagonal stripes. We
therefore agree with the Examiner’s finding that each of Simons’s diagonals
forms a stripe.
Appellants have presented further arguments regarding Huffaker,
including its alleged failure to teach a "plurality of single color films" and its
combinability with Simons. (App. Br. 18-19.) These arguments are not
persuasive for the reasons stated by the Examiner, which we adopt as our
own along with the Examiner's findings regarding the "plurality of single
color films" limitation. (Ans. 3, 4, 9, 10.)
Accordingly, we agree with the Examiner’s conclusion that Simons
teaches all of the contested terms in claim 1.
In the final rejection of claim 19, which depends from claim 1, the
Examiner found that “the recited coating methods using a die coater, a bar
coater, or a spin coater are all well known coating methods in the coating
art” and that
one of ordinary skill in the art would be able to select a coater
among a list of well known coaters based on the type of ink and
transfer film used in order to achieve the desired coating
outcome. Accordingly, the mere selection of a coating method
among a list of well known coating methods by those having
ordinary skill in the art would have been obvious.
(Final Rej. 4).
As pointed out by the Examiner (Ans. 7), Appellants do not contest
the Examiner’s finding that the recited coating methods in claim 19 are well
known coating methods. We therefore agree with the Examiner that one of
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ordinary skill in the art would have selected a coater among a list of well
known coaters in order to obtain expected results (id.).
For the foregoing reasons, Appellants have not persuaded us of error
in the Examiner’s obviousness rejection of representative claim 1 or in the
Examiner’s obviousness rejection of claim 19. Accordingly, we will sustain
the Examiner’s rejection of those claims and dependent claims 2, 9, 10, 13,
14, and 22 which fall with claim 1 as well as independent claim 5 which was
grouped with claim 1.

II.
Dependent claim 6 reads as follows:
6. The method of producing a pattern member according to claim 5,
wherein the step of forming a plurality of single color transfer materials is a
step in which a plastic deformation layer is formed on the transfer substrate
and a coloring material layer is formed simultaneously with the plastic
deformation layer, overlapping on the plastic deformation layer.
Appellants raise a number of issues regarding the rejection of claim 6
(Br. 19-20; Reply Br. 9-10). We address only one feature of claim 6 as
dispositive of the present appeal: “a plastic deformation layer is formed on
the transfer substrate and a coloring material layer is formed simultaneously
with the plastic deformation layer.” Appellants contend that Simons does
not teach a coloring material layer is formed simultaneously with a plastic
deformation layer (Br. 20).4 The Examiner contends that because
Appellants’ disclosure “does not provide any description as to how to form

4 Appellants express a concern that the Final Rejection asserted that claims 6
and 8 are not enabled under 35 U.S.C. § 112, first paragraph, and requested a
formal rejection under that section so that they could reply (Br. 20, 22). In
response, the Examiner’s Answer clarifies that no such rejections have been
made, thereby rendering moot Appellants’ concerns (Ans. 11, 13).
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these layers simultaneously, the Examiner takes the position that forming the
layers simultaneously is a known practice in the art” and that “it would have
been obvious to one of ordinary skill in the art to form these layers . . . to
carry out the known simultaneous step of forming these layers so as to
obtain the predictable result of producing the color transfer films” (Ans. 11).
We conclude that there is not an adequate basis in the record for this
finding in that the Examiner has not produced sufficient evidence to support
the conclusion of obviousness and we therefore cannot sustain the
obviousness rejection of claim 6 and dependent claims 7 and 8.

DECISION
The Examiner’s decision rejecting claims 1, 2, 5, 9, 10, 13, 14, 19,
and 22 is affirmed.
The Examiner’s decision rejecting claims 6-8 is reversed.
No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. § 1.136(a)(1). See 37 C.F.R.
§ 1.136(a)(1)(iv) (2010).

AFFIRMED-IN-PART

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