Ex Parte Senft et al

Board of Patent Appeals and Interferences

Jan 26, 2012

10365865 (B.P.A.I. Jan. 26, 2012)

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.
10/365,865 02/13/2003 Donna S. Senft 7248-011 8343
34534 7590 01/26/2012
KEVIN LYNN WILDENSTEIN
9400 HOLLY AVENUE NE
BUILDING 4H
ALBUQUERQUE, NM 87122
EXAMINER
FERGUSON, LAWRENCE D
ART UNIT PAPER NUMBER
1783
MAIL DATE DELIVERY MODE
01/26/2012 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 DONNA S. SENFT and BIANCA K. THAYER
____________

Appeal 2010-009873
Application 10/365,865
Technology Center 1700
____________

Before BRADLEY R. GARRIS, CHUNG K. PAK, and
MARK NAGUMO, Administrative Patent Judges.

GARRIS, Administrative Patent Judge.

DECISION ON APPEAL
Appellants appeal under 35 U.S.C. § 134 from the Examiner's
decision rejecting claims 1-7 and 16-26. We have jurisdiction under 35
U.S.C. § 6.

We REVERSE.

Appeal 2010-009873
Application 10/365,865

2
Appellants claim a printing laminate material 10 comprising an
electrostatically charged sheet 12 and a backing sheet 14 which comprises a
sheet of paper and a binding material having a dielectric constant greater
than the paper, the top surface of the backing sheet being in contact with the
bottom surface of the electrostatically charged sheet (claim 1; Fig. 1).

Representative claim 1 reads as follows:

1. A printing laminate material comprising:

an electrostatically charged sheet having a top and a bottom surface; and
a backing sheet comprising a sheet of paper having a top and a bottom surface,
said top surface comprising a binding material having a dielectric constant
greater than that of said paper, said top surface of said backing sheet being in
contact with said bottom surface of said electrostatically charged sheet.

The references listed below are relied upon by the Examiner in the
rejections before us:
Back US 3,629,000 Dec. 21, 1971
Ward US 5,904,985 May 18, 1999
Krill US 6,372,157 B1 Apr. 16, 2002

The Examiner rejects claims 1, 2, 4, 16-19, and 21-23 under 35 U.S.C.
§ 102(b) as anticipated by Back.

The Examiner rejects the remaining claims on appeal under 35 U.S.C.
§ 103(a) as unpatentable over Back alone or in various combinations with
Krill or Ward.

Appeal 2010-009873
Application 10/365,865

3
Each of these rejections is based on the Examiner's finding that the
electrostatically charged sheet required by all appealed claims is satisfied by
Back. Specifically, the Examiner finds that "the electrostatic charge with a
printed image [as taught by Back] (column 2, lines 44-51) is interpreted as
an electrostatically charged sheet having a top and a bottom surface [as
recited in each of the independent claims]" (Ans. para. bridging 3-4).

According to Appellants, "the Office's reasoning that Back's
'electrostatic charge with a printed image is interpreted as an electrostatically
charged sheet' defies logic, since how can a 'charged image' be interpreted to
be an 'electrostatically charged sheet'?" (App. Br. para. bridging 15-16).

Significantly, the Examiner does not respond to Appellants' question
by explaining why it is appropriate to interpret the independent claim
limitation "an electrostatically charged sheet" as encompassing Back's
"electrostatic charge with a printed image" (Ans. para. bridging 3-4). On the
other hand, such as interpretation seems contrary to Appellants'
Specification which discloses a clear distinction between the claimed
electrostatically charged sheet and the image printed thereon
("Electrostatically charged sheet 12 has a printing surface 16 which accepts
ink during the printing process."; Spec. 5:10-11).

These circumstances lead us to determine that the finding under
consideration is erroneous because it is based on a claim interpretation
which the Examiner has failed to establish as being reasonable and
Appeal 2010-009873
Application 10/365,865

4
consistent with Appellants' Specification. For this reason, we cannot sustain
any of the Examiner's above §102 or § 103 rejections.

The decision of the Examiner is reversed.
REVERSED

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