Ex Parte Sekine

Board of Patent Appeals and Interferences

Jun 23, 2009

10702312 (B.P.A.I. Jun. 23, 2009)

UNITED STATES PATENT AND TRADEMARK OFFICE
_______________

BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
_______________

Ex parte YOSHINORI SEKINE
______________

Appeal 2008-004003
Application 10/702,312
Technology Center 1700
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Decided:1 June 25, 2009
_______________

Before CHUNG K. PAK, CHARLES F. WARREN, and
CATHERINE Q. TIMM, Administrative Patent Judges.

WARREN, Administrative Patent Judge.

DECISION ON APPEAL
Applicant appeals to the Board from the decision of the Primary
Examiner finally rejecting claims 1 through 12 in the Office Action mailed
December 14, 2008. 35 U.S.C. §§ 6 and 134(a) (2002); 37 C.F.R.

1 The two month time period for filing an appeal or commencing a civil
action specified in 37 C.F.R. § 1.304, begins to run from the Decided date

Appeal 2008-004003
Application 10/702,312
§ 41.31(a) (2007).
We reverse the decision of the Primary Examiner.
Claim 1 illustrates Appellants’ invention of an insert-molded article,
and is representative of the claims on appeal:
1. An insert-molded article, comprising a film having transparency, a
thermosetting decorative print layer printed by use of a crosslinking printing
ink on the backside of said film for the purpose of visual observation from
the front surface side of the film, a binder layer printed on said
thermosoftening decorative print layer by use of a low-crosslinking printing
ink or a non-crosslinking printing ink as the source of said binder layer, and
a resin molded by injection on said binder layer.
The Examiner relies upon the evidence in these references (Ans. 3): 2
Marentic US 6,682,679 B1 Jan. 27, 2004
Ishikawa US 6,933,044 B2 Aug. 23, 2005
Appellant requests review of the grounds of rejection under 35 U.S.C.
§ 102(e) advanced on appeal by the Examiner: claims 1 through 12 as
anticipated by Ishikawa; claims 1 through 12 as anticipated by Marentic.
App. Br. 3-4; Ans. 3 and 4.
We decide this appeal based on representative independent claim 1.
See 37 C.F.R. § 41.37(c)(1)(vii) (2007).
Issues
The issues in this appeal are whether Appellant has shown that the
evidence in Ishikawa and in Marentic does not support the Examiner’s

shown on this page of the decision. The time period does not run from the
Mail Date (paper delivery) or Notification Date (electronic delivery).
2 We consider these documents: Appeal Brief filed August 16, 2007;
Examiner’s Answer mailed November 14, 2007; and Reply Brief filed
January 17, 2008.
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Application 10/702,312
findings of prima facie anticipation with respect to the claimed article
encompassed by claim 1.
Claim Interpretation
The issues entail the interpretation of claim 1 by giving the terms
thereof the broadest reasonable interpretation in their ordinary usage in
context as they would be understood by one of ordinary skill in the art in
light of the written description in the Specification unless another meaning is
intended by Appellant as established therein, and without reading into the
claims any disclosed limitation or particular embodiment. See, e.g., In re
ICON Health and Fitness, Inc., 496 F.3d 1374, 1379 (Fed. Cir. 2007); In re
Am. Acad. of Sci. Tech. Ctr., 367 F.3d 1359, 1364 (Fed. Cir. 2004), and
cases cited therein; In re Morris, 127 F.3d 1048, 1054-55 (Fed. Cir. 1997).
The plain language of claim 1 specifies any insert molded article
comprising at least the following layers in order, as illustrated in the
embodiment depicted in Specification Figure 3 (Figure 3 numerals in
parenthesis): (1) any transparent film; (2) any thermosoftening layer of any
crosslinking printing ink “on the backside” of the transparent layer and
visually observable through the transparent film; (3) a binder layer of any
low- or non-crosslinking printing ink “on the thermosoftening layer;” and
(5) any resin molded “on the binder layer.” See Spec. 15-19. The
transitional term “comprising opens claim 1 to include articles that contain
any number of additional layers of any manner of materials. See, e.g., Exxon
Chem. Pats., Inc. v. Lubrizol Corp., 64 F.3d 1553, 1555 (Fed. Cir. 1995)
(“The claimed composition is defined as comprising - meaning containing at
least - five specific ingredients.”); In re Baxter, 656 F.2d 679, 686 (CCPA
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Application 10/702,312
1981) (“As long as one of the monomers in the reaction is propylene, any
other monomer may be present, because the term ‘comprises’ permits the
inclusion of other steps, elements, or materials.”).
Findings of Fact
We find Ishikawa would have disclosed to one of ordinary skill in this
art the embodiments of a molded article depicted in Figure 4 in which
metallic luster sheet 5 consists of the layers, in order: transparent sheet 2,
metallic luster layer 3, first middle resin layer 7, and second middle resin
layer 8. Ishikawa col. 5, ll. 60-67. Metallic luster layer 3 is formed on the
reverse or backside of transparent sheet 2 by printing with luster producing
ink. Ishikawa col. 6, ll. 6-10; see also, e.g., col. 4, ll. 27-65. First middle
resin layer 7 is printed on metallic luster layer 3 with a cross-linking printing
ink. Ishikawa col. 6, ll. 13; see also col. 6, ll. 1-2. Second middle resin
layer 8 is printed on first middle resin layer 7 with a non- or low-
crosslinking printing ink. Ishikawa col. 6, ll. 13-18; see also col. 6, ll. 2-5.
A resin is mold injected on second middle resin layer 8. Ishikawa col. 6,
ll. 28-32. “[D]irect contact between the injected melted resin . . . and the
metallic luster layer 3 is prevented by the first and second middle resin
layers 7 and 8,” such that “a luster-producing ink that forms the metallic
luster layer 3 is not melted or removed by the heat and flow of the injected
resin.” Ishikawa col. 6, ll. 32-37.
We find Marentic would have disclosed to one of ordinary skill in this
art two molded product embodiments 26, 36 depicted in representative
Figures 7 and 8, respectively, which are prepared by the process steps
depicted in Figures 1-6. Marentic, e.g., col. 2, l. 18 to col. 3, l. 61. Figures 1
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Application 10/702,312
and 2 depict two different intermediate layer arrangements between release
liner 18 and backing 12. Marentic col. 5, l. 59 to col. 6, l. 12; see also, e.g.,
col. 2, ll. 18-22. In Figure 1, decorative transfer 10 has first intermediate
layer 14 which is an ink film in a desired image formed on backing 12, and
second intermediate layer 16 which includes a tacky resin, preferably a
tacky, clear gel coat layer, formed on first intermediate 14. Marentic col. 5,
l. 59 to col. 6, l. 4; see also, e.g., col. 2, ll. 22-24, and col. 3, ll. 31-40. In
Figure 2, decorative transfer 30 has single intermediate layer 32 which
includes an ink film in a desired image and a tacky resin formed on backing
12. Marentic col. 6, ll. 5-12; see also, e.g., col. 2, ll. 24-27, and col. 3, ll. 25-
30. In Figures 3 and 4, the respective tacky intermediate layers
16 and 32 of decorative transfers 10 and 30 are placed against a mold surface
and backing layers 12 removed. Marentic col. 11, l. 66 to col. 12, l. 18. In
Figures 5 and 6, a catalyzed, crosslinking colored gel coat 22 is applied to
respective intermediate layers 14 and 32, and molded support resin material
24 is applied to colored gel coat layers 22. Marentic col. 14, ll. 42-56; see
also, e.g., col. 2, 11. 31-38. “The co-crosslinking of the polymers in all the
layers . . . forms a monolithic-type structure with an image that is
particularly durable due to protection afforded by the crosslinked clear outer
gel coat.” Marentic col. 15, ll. 6-13; see also, e.g., col. 2, 11. 39-44, and col.
14, ll. 57-65.
In Figure 7, molded product 26 has clear gel coat layer 16,
intermediate layer 143 that includes an ink film, colored gel coat layer 22,

3 Numeral “12’ appearing in Figure 7 is in error as seen from Figures 1, 3,
and 5.
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and molded structure 24. Marentic col. 16, ll. 6-12; see also, e.g., col. 2, 11.
53-57. “[T]he image of a decorative transfer is covered by and visible
through an outer layer of crosslinked polymers derived from clear gel coat.”
Marentic col. 2, ll. 45-49. In Figure 8, molded product 36 has the
crosslinked image of intermediate layer 32, colored gel coat layer 22, and
molded structure 24. Marentic col. 16, ll. 19-21. “The image, in this
embodiment, is the crosslinked outer layer.” Marentic col. 16, ll. 22-23; see
also, e.g., col. 2, 11. 49-52.
Marentic discloses that “other types of intermediate layers and/or
more than two layers are also contemplated,” and where more than two
intermediate layers are present, the upper most intermediate layer includes a
tacky resin and the first intermediate layer includes a tack-free resin.
Marentic col. 3, ll. 62-67; see also, e.g., col. 3, ll. 7-11 and 41-47, col. 5,
ll. 23-28.
Discussion
We considered the totality of the record in light of Appellants’
arguments with respect to claim 1 and the ground of rejection advanced on
Appeal. See, e.g., In re Kahn, 441 F.3d 977, 985-86 (Fed. Cir. 2006) (“‘On
appeal to the Board, an applicant can overcome a rejection by showing
insufficient evidence of prima facie obviousness or by rebutting the prima
facie case with evidence of secondary indicia of nonobviousness.”) (quoting
In re Rouffet, 149 F.3d 1350, 1355 (Fed. Cir. 1998); In re Oetiker, 977 F.2d
1443, 1445 (Fed. Cir. 1992) (“After evidence or argument is submitted by
the applicant in response, patentability is determined on the totality of the
record, by a preponderance of evidence with due consideration to
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persuasiveness of argument.”) (citing, inter alia, In re Spada, 911 F.2d 705,
707 n.3 (Fed. Cir. 1990)).
The Examiner must establish a prima facie case of anticipation under
§ 102(e) by showing, as a matter of fact, that a single reference describes to
one skilled in this art each and every limitation of the claimed invention
encompassed by the claim, arranged as required therein, either explicitly or
inherently. See, e.g., In re Schreiber, 128 F.3d 1473, 1477 (Fed. Cir. 1997),
and cases cited therein; In re Bond, 910 F.2d 831, 832-33 (Fed. Cir. 1990),
and cases cited therein.
Ishikawa: Claim 1
We determine Appellant has established the evidence in Ishikawa
does not support the Examiner’s finding of prima facie anticipation with
respect to the claimed article encompassed by claim 1. We agree with
Appellant’s position that the embodiment described in Ishikawa’s Figure 4,
relied on by the Examiner, does not anticipate claim 1. Reply Br. 4-7; Ans.
4 and 5-6. As Appellant points out, claim 1 requires that the
thermosoftening layer is a crosslinked printing ink on the back of the
transparent film layer and visually observable through the transparent film
layer. See above p. 3; Reply Br. 5. Indeed, as Appellant submits, in
Ishikawa’s Figure 4, cross-linked resin layer 7 is not next to transparent
layer 2 and is hidden from view through transparent layer 2 by metallic layer
3. Reply Br. 6; see above p. 4.
Accordingly, in the absence of a prima face case of anticipation over
Ishikawa, we reverse the ground of rejection of claims 1 through 12 under
35 U.S.C. § 102(e).
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Marentic: Claim 1
We determine Appellant has established the evidence in Marentic
does not support the Examiner’s finding of prima facie anticipation with
respect to the claimed article encompassed by claim 1. We agree with
Appellant that the embodiments described in Marentic’s Figures 1-8 do not
anticipate claim 1. Reply Br. 9. As Appellant points out, claim 1 requires
that the binder layer is a low- or non-crosslinking printing ink on the
thermosoftening layer and the described embodiments do not contain this
layer. See above p. 3; Reply Br. 9. In this respect, we agree with Appellant
that in Marentic’s described embodiments, the colored gelcoat layer is not a
binder layer as claimed since it is not a low- or non-crosslinking ink layer.
Reply Br. 11; see above pp. 5-6. We further agree with Appellant that
contrary to the Examiner’s contentions, Marentic’s general disclosure of
alternative embodiments wherein one or more additional intermediate layers
of unspecified ingredients can be present in the molded product does not
provide a description of a molded product. Indeed, to arrive at the claimed
articles having a binder layer as claimed, one skilled in this art would have
to pick and choose between unrelated embodiments. Reply Br. 9-10; Ans.,
e.g., 4-5, 7, and 8; see above p. 6. Cf. In re Arkley, 455 F.2d 586, 587
(CCPA 1972) (“[F]or the instant rejection under 35 U.S.C. 102(e) to have
been proper, the . . . reference must clearly and unequivocally disclose the
claimed compound or direct those skilled in the art to the compound without
any need for picking, choosing, and combining various disclosures not
directly related to each other by the teachings of the cited reference.”). In
this respect, we note Appellant also points out that the colored gelcoat layer
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does not fall within Marentic’s description of “intermediate layers.” Reply
Br. 11; see above pp. 5-6.
Accordingly, in the absence of a prima face case of anticipation over
Marentic, we reverse the ground of rejection of claims 1 through 12 under
35 U.S.C. § 102(e).
The Primary Examiner’s decision is reversed.

REVERSED

tc

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