Ex Parte Kronzer

Board of Patent Appeals and Interferences

Aug 22, 2012

10894841 (B.P.A.I. Aug. 22, 2012)

UNITED STATES PATENT AND TRADEMARKOFFICE
UNITED STATES DEPARTMENT OF COMMERCE
United States Patent and Trademark Office
Address: COMMISSIONER FOR PATENTS
P.O. Box 1450
Alexandria, Virginia 22313-1450
www.uspto.gov
APPLICATION NO. FILING DATE FIRST NAMED INVENTOR ATTORNEY DOCKET NO. CONFIRMATION NO.
10/894,841 07/20/2004 Francis Joseph Kronzer NPI-52 (20432) 5859
22827 7590 08/22/2012
DORITY & MANNING, P.A.
POST OFFICE BOX 1449
GREENVILLE, SC 29602-1449
EXAMINER
MCCLELLAND, KIMBERLY KEIL
ART UNIT PAPER NUMBER
1745
MAIL DATE DELIVERY MODE
08/22/2012 PAPER
Please find below and/or attached an Office communication concerning this application or proceeding.
The time period for reply, if any, is set in the attached communication.
PTOL-90A (Rev. 04/07)

UNITED STATES PATENT AND TRADEMARK OFFICE
________________

BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
________________

Ex parte FRANCIS JOSEPH KRONZER
________________

Appeal 2011-003587
Application 10/894,841
Technology Center 1700
________________

Before CHARLES F. WARREN, TERRY J. OWENS, and
BEVERLY A. FRANKLIN, Administrative Patent Judges.

OWENS, Administrative Patent Judge.

DECISION ON APPEAL

Appeal 2011-003587
Application 10/894,841

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STATEMENT OF THE CASE
The Appellant appeals under 35 U.S.C. § 134(a) from the Examiner’s
rejection of claims 42, 43, and 45-71.1 We have jurisdiction under
35 U.S.C. § 6(b).
The Invention
The Appellant claims a method for applying an image to a substrate
such as a fabric. Claim 42 is illustrative:
42. A method of applying an image to a substrate, the method
comprising

positioning a release sheet material adjacent to a transfer layer to form
a laminate, wherein the release sheet material defines a printed area forming
an image and a non-printed area, wherein the transfer layer overlies a base
sheet to form a transfer sheet material, and wherein the transfer layer
comprises a film-forming binder and thermoplastic particles;

heating the laminate in both the printed area and non-printed area
causing the transfer layer to fuse to the release sheet material in the printed
area forming a fused portion of the transfer coating, wherein transfer layer
remains unfused in the non-printed area of the release sheet material;

separating the release sheet material and the fused portion of the
transfer layer from the laminate to form an intermediary transfer material,
wherein the fused portion of the transfer layer overlays the image on the
intermediary transfer layer and the unfused, non-printed area of intermediary
transfer material remain on the transfer sheet material;

1 The Appellant states that claims 72-74 have been canceled (Br. 2).
However, the amendment (filed July 11, 2010) canceling those claims was
not entered by the Examiner (advisory action mailed Sep. 8, 2010, p. 2).
Because those claims are pending but not appealed, the Examiner should
cancel them. See Ex parte Ghuman, 88 USPQ2d 1478, 1480 (BPAI 2008)
(precedential).
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Application 10/894,841

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positioning the intermediary transfer material so that the remaining
fused portion of the transfer layer is adjacent to the substrate and the image
is between the transfer layer and the release sheet material;

heating the intermediary transfer material to transfer the transfer layer
and the image to the substrate; and

removing the release sheet material from the substrate so that the
image is exposed on the substrate, wherein the image overlies the transfer
layer and the transfer layer overlies the substrate.

The References
Greenman US 4,235,657 Nov. 25, 1980
Johnstone US 5,520,763 May 28, 1996
Torii US 6,004,419 Dec. 21, 1999
Oshima US 6,291,062 B1 Sep. 18, 2001
Usuki US 6,316,385 B1 Nov. 13, 2001
Ueno US 2002/0048663 A1 Apr. 25, 2002
Kronzer US 6,428,878 B1 Aug. 6, 2002
Hare US 6,638,682 B2 Oct. 28, 2003
Mabbott US 6,656,306 B1 Dec. 2, 2003
Kinning US 2004/0126576 A1 Jul. 1, 2004
The Rejections
The claims stand rejected as follows: claims 42, 43, and 45-71 under
35 U.S.C. § 112, first paragraph, as failing to comply with the written
description requirement, claims 42, 43, 45-47, 57, 59-68, 70, and 71 under
35 U.S.C. § 103 over Mabbott in view of Hare and Johnstone, claims 48, 49,
and 51-53 under 35 U.S.C. § 103 over Mabbott in view of Hare, Johnstone,
and Torii, claims 48, 49, 53, and 54 under 35 U.S.C. § 103 over Mabbott in
view of Hare, Johnstone, and Greenman, claims 49 and 50 under
35 U.S.C. § 103 over Mabbott in view of Hare, Johnstone, and Kinning,
claim 55 under 35 U.S.C. § 103 over Mabbott in view of Hare, Johnstone,
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Application 10/894,841

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and Oshima, claim 56 under 35 U.S.C. § 103 over Mabbott in view of Hare,
Johnstone, and Kronzer, claim 58 under 35 U.S.C. § 103 over Mabbott in
view of Hare, Johnstone, and Ueno, and claim 69 under 35 U.S.C. § 103
over Mabbott in view of Hare, Johnstone, and Usuki.
OPINION
We reverse the rejections.
Rejection under 35 U.S.C. § 112, first paragraph
For an applicant to comply with the 35 U.S.C. § 112, first paragraph,
written description requirement, the applicant’s specification must “convey
with reasonable clarity to those skilled in the art that, as of the filing date
sought, he or she was in possession of the invention.” Carnegie Mellon
University v. Hoffmann-La Roche Inc., 541 F.3d 1115, 1122 (Fed. Cir.
2008), quoting Vas-Cath Inc. v. Mahurkar, 935 F.2d 1555, 1563-64 (Fed.
Cir. 1991).
The Examiner argues that “[t]he claim limitations of ‘heating the
laminate in both the printed area and non-printed area’, ‘the transfer coating
remains unfused in the non-printed area of the release sheet material’, [and]
‘the unfused, non-printed area of intermediary transfer material remain on
the transfer sheet’ are found to be new matter” (Ans. 10).
The Appellant’s disclosure that “[h]eat and pressure are applied to the
backing layer external surface 14, 24 of one or both sides of the two transfer
materials 10, 20” (Spec. 21:19-20; Fig. 3b) shows possession of “heating the
laminate in both the printed area and non-printed area”. The Appellant’s
Figure 3c shows possession of “transfer coating [23] remains unfused in the
non-printed area of the release sheet material [10]” and “the unfused, non-
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Application 10/894,841

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printed area of intermediary transfer material [40] remain on the transfer
sheet [20]”.
Hence, we reverse the rejection under 35 U.S.C. § 112, first
paragraph, written description requirement.
Rejections under 35 U.S.C. § 103
The Appellant’s independent claims (42 and 72) require forming a
laminate which includes a release sheet material and a transfer layer,
wherein the transfer layer overlies a base sheet to form a transfer sheet
material.
The Examiner relies upon Mabbott’s adhesive transfer sheet, which
comprises a peel-off layer having an adhesive coating (adhesive layer 17)
thereon (col. 5, ll. 42-63), as corresponding to the Appellant’s transfer sheet
material formed of a transfer layer overlying a base sheet (Ans. 11).
That adhesive transfer sheet is used to apply its adhesive layer (17),
which can be pressure activated and/or heat activated (col. 4, ll. 3-4), over an
image release surface (14) and an image layer (16) (col. 4, ll. 3-6; col. 5,
ll. 42-57; Fig. 5A).
The Appellant’s claims 42 and 72 also require that the laminate is
heated. To meet that claim requirement Mabbott’s adhesive transfer sheet,
which the Examiner relies upon as corresponding to the transfer sheet
material component of the Appellant’s laminate (Ans. 11), must be heated.2

2 The Appellant argues that “Mabbott does not “disclose the step of heating
his ‘adhesive transfer sheet’ to fuse his adhesive to the image on the imaged
image layer” (Br. 13).
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The Examiner does not address the Appellant’s step of heating the
laminate. The only heating step addressed by the Examiner is the step of
heating the intermediary transfer material (Ans. 11).
The Examiner, therefore, has not established a prima facie case of
obviousness of the Appellant’s claimed method.
DECISION/ORDER
The rejection of claims 42, 43, and 45-71 under 35 U.S.C. § 112, first
paragraph, written description requirement, and the rejections under
35 U.S.C. § 103 of claims 42, 43, 45-47, 57, 59-68, 70, and 71 over Mabbott
in view of Hare and Johnstone, claims 48, 49, and 51-53 over Mabbott in
view of Hare, Johnstone, and Torii, claims 48, 49, 53, and 54 over Mabbott
in view of Hare, Johnstone, and Greenman, claims 49 and 50 over Mabbott
in view of Hare, Johnstone, and Kinning, claim 55 over Mabbott in view of
Hare, Johnstone, and Oshima, claim 56 over Mabbott in view of Hare,
Johnstone, and Kronzer, claim 58 over Mabbott in view of Hare, Johnstone,
and Ueno, and claim 69 over Mabbott in view of Hare, Johnstone, and Usuki
are reversed.
It is ordered that the Examiner’s decision is reversed.
REVERSED

sld