Ex parte NEUMANN

Board of Patent Appeals and Interferences

Feb 23, 1998

07890456 (B.P.A.I. Feb. 23, 1998)

Application for patent filed May 29, 1992.1
Administrative Patent Judge (APJ) Thierstein2
participated in the oral hearing on April 8, 1997, but has
since resigned. APJ Warren has been substituted on this
merits panel. Compare In re Bose, 772 F.2d 866, 227 USPQ 1
(Fed. Cir. 1985).
-1-
THIS OPINION WAS NOT WRITTEN FOR PUBLICATION
The opinion in support of the decision being entered
today (1) was not written for publication in a law
journal and (2) is not binding precedent of the
Board.
Paper No. 20
UNITED STATES PATENT AND TRADEMARK OFFICE
________________
BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
________________
Ex parte STEPHEN M. NEUMANN
________________
Appeal No. 94-0539
Application 07/890,4561
________________
HEARD: April 8, 1997
________________
Before KIMLIN, WEIFFENBACH and WARREN, Administrative Patent2
Judges.
KIMLIN, Administrative Patent Judge.
DECISION ON APPEAL
This is an appeal from the final rejection of claims 1-
12, all the claims in the present application. Claim 1 is
illustrative:
Appeal No. 94-0539
Application 07/890,456
-2-
1. In a dye donor element for laser-induced thermal dye
transfer comprising a support having thereon a dye layer
comprising a sublimable image dye in a binder, said image dye
being capable of transferring to a dye-receiving element, and
an infrared absorbing dye associated with said dye layer and
which absorbs the laser radiation, the improvement wherein
said binder comprises a nonpolymeric, organic material with a
glassy state having a glass transition temperature of greater
than 25EC., capable of forming an amorphous glass with said
image dye.
The examiner relies upon the following references as
evidence of obviousness:
Molaire 4,626,361 Dec. 2, 1986
Chapman et al. (Chapman) 5,036,040 July 30, 1991
Kawakami et al. (Kawakami) 5,114,904 May 19, 1992
(filed Dec. 20, 1990)
Appellant's claimed invention is directed to a dye donor
element that is used in laser-induced thermal dye transfer
processes. According to appellant, the invention is an
improve-ment over the use of a conventional, polymeric binder
for the donor element. In particular, appellant employs a
non-polymeric, organic material with a glassy state as the
binder. According to appellant, the comparative example at
page 15 of the present specification shows improved
transferred dye density when the claimed binder is used
instead of a cellulose acetate propionate binder, which is a
typical polymeric binder of the prior art.
Appeal No. 94-0539
Application 07/890,456
-3-
Appealed claims 1-12 stand rejected under 35 U.S.C. § 103
as being unpatentable over Chapman in view of Molaire and
Kawakami.
Upon thorough review of the opposing arguments presented
on appeal, we concur with appellant that the examiner has not
established a prima facie case of obviousness for the claimed
invention. Accordingly, we will not sustain the examiner's
rejection.
Chapman, the primary reference, discloses the
conventional use of a polymeric binder for a dye donor element
of a laser-induced thermal dye transfer process. While
Molaire discloses appellant's nonpolymeric, organic material
as a binder in a laser-recording element, we agree with
appellant that there is no teaching or suggestion in the
applied references that the binder of Molaire can be
effectively employed as a binder for the donor element of a
thermal dye transfer process.
The examiner's reliance on Kawakami for providing the
motivation for utilizing the binder of Molaire in the donor
element of Chapman is misplaced. Like Chapman, Kawakami uses
a polymeric binder in the donor element of a thermal transfer
Appeal No. 94-0539
Application 07/890,456
-4-
process. The examiner reasons that since Kawakami teaches
that the glass transition temperature for dye layer
compositions should be in the range of 10E to 70EC, and
Molaire teaches dye/binder mixtures having glass transition
temperatures within the range of 10-70EC, "one skilled in the
art would be directed to substitute the binder disclosed by
Molaire for that used in the examples of Chapman" (page 10 of
Answer). As pointed out by appellant, the flaw in the
examiner's reasoning is that Kawakami teaches that the binder
itself should have a glass transition temperature in the range
of 10-70EC, whereas Molaire teaches that the binder itself has
a glass transition temperature ranging from 101E to 152EC.
In our view, the most that can be concluded from the
collective teachings of the applied references is that it
might have been obvious for one of ordinary skill in the art
to try a binder that is known to be useful for optical
recording mediums as a binder in the donor element of a
thermal dye transfer process. Of course, it is by now well
settled that such is not the proper standard for determining
obviousness under 35 U.S.C. § 103.
Appeal No. 94-0539
Application 07/890,456
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In conclusion, based on the foregoing, we are constrained
to reverse the examiner's rejection.
REVERSED
EDWARD C. KIMLIN )
Administrative Patent Judge )
)
)
)
CAMERON WEIFFENBACH ) BOARD OF PATENT
Administrative Patent Judge ) APPEALS AND
) INTERFERENCES
)
)
CHARLES F. WARREN )
Administrative Patent Judge )
Joshua G. Levitt
Eastman Kodak Co.
Patent Legal Staff
Rochester, NY 14650-2201