Ex Parte Tevis et al

Board of Patent Appeals and Interferences

Aug 31, 2012

10528220 (B.P.A.I. Aug. 31, 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.
10/528,220 03/18/2005 Mark C. Tevis SGI-0084-PCT-US 6257
22827 7590 08/31/2012
DORITY & MANNING, P.A.
POST OFFICE BOX 1449
GREENVILLE, SC 29602-1449
EXAMINER
LIGHTFOOT, ELENA TSOY
ART UNIT PAPER NUMBER
1715
MAIL DATE DELIVERY MODE
08/31/2012 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 MARK C. TEVIS and KEN DOWNING
____________

Appeal 2011-003021
Application 10/528,220
Technology Center 1700
____________

Before CHUNG K. PAK, BEVERLY A. FRANKLIN,
and KAREN M. HASTINGS, Administrative Patent Judges.

HASTINGS, Administrative Patent Judge.

DECISION ON APPEAL

Appellants seek our review under 35 U.S.C. § 134 of the Examiner’s
final decision rejecting claims 25-37, 39, and 40. We have jurisdiction over
the appeal under 35 U.S.C. § 6(b).
We REVERSE.
Claim 25 is illustrative of the claimed subject matter:

25. A method for applying an image onto a game card, the method
comprising the steps of:
(a) applying a first composition comprising a first oligomer
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Application 10/528,220

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comprising an energy-curable oligomer to the outer surface of the game card
to produce a first layer, wherein after the application step (a), a first layer
comprising the first oligomer is on the outer surface of the game card, and
wherein the first layer has an outer surface;
(b) drying the game card produced after step (a);
(c) at least partially curing the first composition;
(d) applying a second composition comprising a second oligomer
comprising an energy-curable oligomer to the outer surface of the first layer
to produce a second layer, wherein after the application step (d), the second
layer is on the outer surface of the first layer, and wherein the second layer
has an outer surface;
(e) drying the game card produced after step (d);
(f) at least partially curing the second composition;
(g) applying a third composition comprising a third oligomer
comprising an energy-curable oligomer to the outer surface of the second
layer to produce a third layer, wherein after the application step (g), the third
layer is on the outer surface of the second layer;
(h) curing the first oligomer, the second oligomer, and the third
oligomer; and
(i) applying an ink to the outer surface of the first layer, or the outer
surface of the second layer, or to both, so as to form an image.

The only other independent claim 40 similarly recites a method of
applying to a lottery ticket a first, second and third composition layer each
comprising an oligomer, wherein an ink is applied to the outer surface of the
second layer to produce an image (Claims Appx).
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Application 10/528,220

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The Examiner maintains, and the Appellants appeal, the following
rejections under 35 U.S.C. § 103(a):
1) claims 25-35, 37, 39, and 40 as unpatentable over the
combined prior art of Sekioka1, Kubota2, Uematsu3, and
Danelski4;
2) claims 25-35 and 37 as unpatentable over the combined prior
art of Sekioka, Kubota, Maag5, Uematsu, and Danelski;
3) claim 35 as unpatentable over Sekioka, Kubota, Uematsu,
and Danelski with or without Maag, and further with Brack6;
and
4) claim 36 as unpatentable over Sekioka, Kubota, Uematsu,
and Danelski with or without Maag , further with Ishikawa7.

ANALYSIS
The Examiner bears the initial burden of presenting a prima facie case
of obviousness. In re Oetiker, 977 F.2d 1443, 1445 (Fed. Cir. 1992).
“[R]ejections on obviousness grounds cannot be sustained by mere

1 WO 0240607A1, published May 2002, as translated in U.S. Patent No.
6,899,752. The Examiner’s determination that the WO publication under 35
U.S.C. § 102 (a) is equivalent to U.S. 6,899,752 is not unreasonable since
Appellants have not specifically refuted the Examiner’s findings that the
description and drawings of WO and US are “identical . . . due to
[international stage] filing requirements” (Communication mailed Nov. 12,
2020, p. 3).
2 U.S. Patent 5,698,284 issued Dec. 16, 1997
3 JP-407073511A published Mar. 17, 1995
4 U.S. Patent 5,282,917 issued Feb. 1, 1994.
5 U.S. Patent 6,472,026 B6 issued Oct. 29, 2002.
6 U.S. Patent 4,303,696 issued Dec. 1, 1981.
7 U.S. Patent 5,795,642 issued Aug. 18, 1998.
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Application 10/528,220

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conclusory statements; instead, there must be some articulated reasoning
with some rational underpinning to support the legal conclusion of
obviousness.” In re Kahn, 441 F.3d 977, 988 (Fed. Cir. 2006) quoted with
approval in KSR Int'l Co. v. Teleflex Inc., 550 U.S. 398, 418 (2007).
The fact finder must be aware “of the distortion caused by hindsight
bias and must be cautious of arguments reliant upon ex post reasoning.”
KSR Int'l Co. v. Teleflex Inc., 550 U.S. at 421(citing Graham v. John Deere
Co., 383 U.S. 1, 36 (1966) (warning against a “temptation to read into the
prior art the teachings of the invention in issue”)).
After consideration of the record before us, we agree with Appellants
that the Examiner has not shown where any of the applied prior art teaches
or suggests applying an ink to an outer surface of an energy-curable
oligomer layer as recited in claim 1 (e.g., Br. 10). The Examiner relies
upon Danelski to exemplify that it was known to have both concealed
images and visible ink images on e.g., game tickets or cards. The Examiner
then merely concludes that it would have been prima facie obvious to apply
the visible ink to a “partially cured second layer of the three-layer protective
film such that the image would be visible through the transparent film [i.e.,
the third layer], as taught by Danelski” (Ans. 10; see also e.g., 18-19; 21).
However, Danelski does not teach applying ink to a second layer of a three
layered film, nor indeed does the Examiner direct us to any disclosure in
Danelski that teaches applying ink to an oligomer containing layer.
The Examiner has not directed our attention to any evidence nor
provided any persuasive line of technical reasoning that any of the applied
references teaches or suggests the claimed feature in dispute of applying an
ink to the outer surface of an energy-curable oligomer layer. Notably, the
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Examiner has not made any explicit finding on this record that it was known
in the prior art to apply ink to an energy-curable oligomer layer (App. Br.
10; Ans. generally).
For the foregoing reasons, and those presented by Appellants in the
Briefs, the Examiner has not satisfied the initial burden of presenting a prima
facie case of obviousness, and we conclude that the Examiner’s rejection is
improperly based upon improper hindsight reasoning. KSR, 550 U.S. at 421.
Under these circumstances, we are constrained to reverse all of the §
103 rejections of the claims on appeal.

REVERSED

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