Ex Parte Kronzer et al

Patent Trial and Appeal Board

Apr 25, 2017

13213160 (P.T.A.B. Apr. 25, 2017)

UNITED STATES PATENT AND TRADEMARK OFFICE
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.
13/213,160 08/19/2011 Frank J. Kronzer NPI-187 (NP-0035) 7735
22827 7590 04/25/2017
DORITY & MANNING, P.A.
POST OFFICE BOX 1449
GREENVILLE, SC 29602-1449
EXAMINER
WIECZOREK, MICHAEL P
ART UNIT PAPER NUMBER
1712
MAIL DATE DELIVERY MODE
04/25/2017 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 PATENT TRIAL AND APPEAL BOARD
________________

Ex parte FRANK J. KRONZER, STEPHEN C. LAPIN,
STEVEN E. ROSENBERG, and JOHN A. PUGLIANO
________________

Appeal 2016-001635
Application 13/213,160
Technology Center 1700
________________

Before TERRY J. OWENS, JULIA HEANEY, and
MICHAEL G. McMANUS, Administrative Patent Judges.

OWENS, Administrative Patent Judge.

DECISION ON APPEAL

STATEMENT OF THE CASE
The Appellants appeal under 35 U.S.C. § 134(a) from the Examiner’s
rejection of claims 1–15. We have jurisdiction under 35 U.S.C. § 6(b).
The Invention
The Appellants claim a method for forming a casting paper. Claim 1
is illustrative:
1. A method of forming a casting paper, the method
comprising:
coating a first surface of a base sheet with a release
coating such that the release coating covers the entire first
surface of the base sheet, wherein the release coating comprises
a first curable polymeric material and a first release agent;
curing the release coating;
Appeal 2016-001635
Application 13/213,160

2
applying a printed release coating on a portion of the
release coating, wherein the print coating comprises a second
curable polymeric material and a second release agent; and
curing the printed release coating to form the casting paper
having a textured surface defined by elevated areas
corresponding to the printed release coating and valley areas
corresponding to exposed areas of the release coating
wherein the release coating and the printed release coating
are crosslinked upon curing so as to not melt at a transfer
temperature of about 200° F to about 400° F.

The References
Keino US 4,515,849 May 7, 1985
Kojime US 5,166,186 Nov. 24, 1992
Smith US 5,707,472 Jan. 13, 1998
Dhoot US 6,150,024 Nov. 21, 2000
Williams US 6,869,910 B2 Mar. 22, 2005
de Visser US 6,902,779 B1 June 7, 2005
Kronzer US 7,238,410 B2 July 3, 2007
The Rejections
The claims stand rejected under 35 U.S.C. § 103 as follows: claims 1,
5–9 and 11–14 over Smith in view of Keino, Dhoot and Kojime, claims 2–4
over Smith in view of Keino, Dhoot, Kojime and de Visser, claim 10 over
Smith in view of Keino, Dhoot, Kojime and Kronzer and claim 15 over
Smith in view of Keino, Dhoot, Kojime and Williams.1

1 A rejection of claims 1, 5–9 and 11–14 under 35 U.S.C. § 103 over Galante
(US 4,548,857) in view of Smith, Keino, Dhoot and Kojime is withdrawn in
the Examiner’s Answer (Ans. 2).
Appeal 2016-001635
Application 13/213,160

3
OPINION
We reverse the rejections. We need address only the sole independent
claim, i.e., claim 1.2 That claim requires forming a casting paper by a
method comprising applying, to a portion of a release coating, a printed
release coating comprising a curable polymeric material and a release agent,
and curing the printed release coating. To meet that claim requirement the
Examiner relies upon Smith (Final Act. 3).
Smith discloses (col. 3, ll. 16–35):
a process for the in-mold printing of indicia onto a molded
plastic or rubber article, said process comprising:
(A) forming a transfer composite by
(i) providing a casting substrate [1];
(ii) providing a printable permanently-adhered
controlled-release surface [3] thereon;
(iii) printing a thin, pressure sensitive adhesive
tape-strippable pattern [2] thereon
discontinuously with an ink comprising a
pigment or a dye and a polymeric vehicle
[Fig. 1];
(B) fitting the transfer composite into a mold [Fig. 2];
(C) forming a molding in the mold whereby the printing
ink pattern is transferred onto the surface of the
molding and decorates it [Fig. 3]; and
(D) removing the casting substrate (A)(i) and the
controlled release surface (A)(ii) from the decorated
molding while leaving the pigment or dye and the
vehicle embedded in the surface of the molding
[Fig. 4].

2 The Examiner does not rely upon de Visser, Kronzer or Williams for any
disclosure that remedies the deficiency in the references applied to the
independent claim (Final Act. 7–10).
Appeal 2016-001635
Application 13/213,160

4
The ink’s polymeric vehicle can be a thermoplastic or thermosetting resin
(col. 2, ll. 64–66).
The Examiner finds that “the pint [sic, print] coating/ink layer of
Smith was intended to be released from the underlying layer it was deposited
upon. Therefore, the print coating/ink of Smith can be considered a release
coating based on the definition provide[d] within the specification of the
present application” (Final Act. 6), and that “the inclusion of a release agent
into the ink/material used to form the printed discontinuous layer of Smith
would improve the ability for the printed discontinuous layer to separate
from the release layer” (Ans. 4).
“‘[D]uring examination proceedings, claims are given their broadest
reasonable interpretation consistent with the specification.’” In re
Translogic Tech. Inc., 504 F.3d 1249, 1256 (Fed. Cir. 2007) (quoting In re
Hyatt, 211 F.3d 1367, 1372 (Fed. Cir. 2000)).
The Appellants’ Specification states that “the term ‘release coating’
indicates a coating which has release properties for a number of materials
and is durable” (Spec. 7:15–16), “curing generally transforms the curable
polymeric material into a highly crosslinked layer configured to withstand
multiple heating and pressing cycles encountered during repeated use of the
final casting paper” (Spec. 15:3–5), and the casting paper (10) can “be
removed from the transferred thermoplastic layer 19 (due to the release
properties of the print coating 18 and the exposed surface 17 of the release
coating 16), leaving a texturized surface 23 defined by peaks 24 and
valleys 25 on the substrate 22” (Spec. 17:22 – 18:3; Figs. 4, 5), where
“[g]enerally, the peaks correspond to the exposed release surface 17 of the
Appeal 2016-001635
Application 13/213,160

5
release coating 16 on the casting paper 10, while the valleys 25 correspond
to the printed coating 18 of the casting paper 10” (Spec. 18:3–5).
Thus, the broadest reasonable interpretation of the Appellants’ claim
term “release coating” consistent with the Appellants’ Specification is that it
is a coating which remains part of the casting paper during the casting
paper’s use, but from which a texturized layer is released during that use.
That interpretation, therefore, excludes Smith’s patterned strippable ink (2)
which, during use of the transfer composite, releases from the transfer
composite’s controlled release surface (3) and transfers to and decorates the
surface of a molding (4a) (col. 3, ll. 32–35; Fig. 4).
Consequently, the Examiner has not established a prima facie case of
obviousness of the Appellants’ claimed method.
DECISION/ORDER
The rejections under 35 U.S.C. § 103 of claims 1, 5–9 and 11–14 over
Smith in view of Keino, Dhoot and Kojime, claims 2–4 over Smith in view
of Keino, Dhoot, Kojime and de Visser, claim 10 over Smith in view of
Keino, Dhoot, Kojime and Kronzer and claim 15 over Smith in view of
Keino, Dhoot, Kojime and Williams are reversed.
It is ordered that the Examiner’s decision is reversed.

REVERSED