James H. May et al.

Patent Trials and Appeals Board

Mar 2, 2020

13136641 - (D) (P.T.A.B. Mar. 2, 2020)

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.
13/136,641 08/08/2011 James H. May G-3717 7289
7590 03/02/2020
Larry F. Gitlin, Esq. - BEAUMONT GITLIN TASHJIAN
STE. 1620
21650 OXNARD STREET
WOODLAND HILLS, CA 91367
EXAMINER
SENGUPTA, SONYA MAZUMDAR
ART UNIT PAPER NUMBER
1745
MAIL DATE DELIVERY MODE
03/02/2020 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 JAMES H. MAY and THOMAS ZYGMONT
Appeal 2018-008004
Application 13/136,641
Technology Center 1700
Before CATHERINE Q. TIMM, JAMES C. HOUSEL, and DONNA M.
PRAISS, Administrative Patent Judges.
HOUSEL, Administrative Patent Judge.
DECISION ON APPEAL
STATEMENT OF THE CASE
Pursuant to 35 U.S.C. § 134(a), Appellant1 appeals from the
Examiner’s decision to reject claims 2–4 and 6–13. We have jurisdiction
under 35 U.S.C. § 6(b).
We REVERSE.2

1 We use the word Appellant to refer to “applicant” as defined in 37 C.F.R.
§ 1.42(a). Appellant identifies the real party in interest as Remo, Inc. Appeal
Brief (“Appeal Br.”) filed February 12, 2018, 1.
2 Our Decision additionally refers to the Specification (“Spec.”) filed August
8, 2011, the Examiner’s Non-Final Office Action (“Non-Final Act.”) dated
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Application 13/136,641

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CLAIMED SUBJECT MATTER
The claims are directed to a method of drumhead imaging. Spec. 1,
Title. Specifically, Appellant discloses that the invention is directed to a
method of forming a dye sublimation image of a simulated animal skin or
other graphic image in a vibrating membrane employed in a musical
instrument. Id. at 1:5–7.
Claim 13, reproduced below from the Claims Appendix to the Appeal
Brief, is illustrative of the claimed subject matter:
13. A method for forming a dye sublimation image comprising
the steps of:
providing an image;
providing a substrate;
transferring said image onto said substrate;
providing a sheet of gas permeable membrane with
vibrational character comprised of bi-axially oriented non-
woven polyester fibers for use in the fabrication of a musical
drumhead, said sheet of gas permeable membrane having a
plurality of surface pores and a musical drum sound producing
capability;
joining said image enhanced substrate with said sheet of
gas permeable membrane:
applying a combination of heat and pressure to said
Joined said image enhanced substrate and said sheet of gas
permeable membrane to cause said individual surface pores to
expand to enable said dye to gasify and permeate said surface
pores to transfer said image; and,
cooling said membrane to enable said surface pores to
seal over and encase said image to integrate said image with
said membrane in delamination and weather resistant relation.

July 12, 2017, the Examiner’s Answer (“Ans.”) dated May 24, 2018, and the
Reply Brief (“Reply Br.”) filed July 24, 2018.

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Application 13/136,641

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REFERENCES
The prior art relied upon by the Examiner is:
Name Reference Date
Robbins et al.
(“Robbins”)3
US 3,444,732 May 20, 1969
Hare et al. (“Hare”) US 6,083,656 July 4, 2000
Odamura et al.
(“Odamura”)
US 2003/0007058 A1 Jan. 9, 2003
Torikoshi et al.
(“Torikoshi”)
US 2006/0216497 A1 Sept. 28, 2006
Laminator Specifications, LPD3206 product description, http://fujipla-
japan.com/goods/list.html, downloaded 9/1/2015, Fujipla, Inc., 2006.
(“Fujipla”)

REJECTIONS
The Examiner maintains, and Appellant requests our review of, the
following grounds of rejection under 35 U.S.C. § 103(a):
1. Claims 2–4, 6–8, 10, 11, and 13 as unpatentable over Torikoshi
in view of Hare; and
2. Claims 9 and 12 as unpatentable over Torikoshi in view of
Hare, and further in view of Fujipla, Odamura, and Robbins.

OPINION
After review of the Examiner’s and Appellant’s opposing positions
and the appeal record before us, we determine that Appellant’s arguments
are sufficient to identify reversible error in the Examiner’s obviousness

3 The Examiner refers to this reference as McKinley, which appears to refer
to the last name of the second named inventor on this patent. We adopt the
common convention of referring to patents using the last name of the first
named inventor.
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Application 13/136,641

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rejections. In re Jung, 637 F.3d 1356, 1365 (Fed. Cir. 2011). Accordingly,
we reverse the stated rejections for the reasons set forth in the Appeal and
Reply Briefs.
The Examiner finds that Torikoshi teaches a method for forming a dye
sublimation image substantially as recited in claim 13, except for transfer
printing an image onto a substrate. Non-Final Act. 3–4. For this feature, the
Examiner finds that Hare teaches imaging a transfer material, followed by
transfer the print to a substrate and concludes that it would have been
obvious to do so in Torikoshi. Id. at 4.
Appellant argues that neither Torikoshi nor Hare is in the same field
of endeavor as that of claim 13. Appeal Br. 3. In particular, Appellant
contends that Torikoshi teaches a method of manufacturing an image
transfer sheet in the field of electrophotography using an electrostatic latent
image developed using a color toner powder. Id. at 3–4. Appellant also
contends that Hare teaches a method of applying an image to a fabric using
two heating steps including hand ironing an image coating from a transfer
sheet to the fabric, and re-ironing the transferred image with a tack-free
overlay sheet. Id. at 4. In contrast, Appellant asserts that the claimed
invention is directed to a method for preservation of musical drumheads
impregnated with graphic images. Id.
Appellant further argues that neither Torikoshi nor Hare is reasonably
pertinent to the problem faced by inventors. Appeal Br. 4–5. In this regard,
Appellant contends that neither reference has any connection to the field of
musical drumheads, nor does either reference suggest to those skilled in the
field of the invention that the technology taught therein would have any
application to the problem solved by the claimed method. Id. at 5. Appellant
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asserts that neither reference addresses or attempts to solve the problem
confronting the inventors, i.e., delamination of graphical images from the
musical drumheads. Id. According to Appellant, Torikoshi teaches use of
various materials, including PET resin film, for embossing image or prints
employing electrophotographic technology, and Hare teaches applying an
image to fabrics or other materials. Id. at 6.
Appellant’s arguments are persuasive of reversible error. A reference
is analogous art if it is either in the same field of the endeavor, regardless of
the problem addressed, or is reasonably pertinent to the particular problem
with which the inventor was concerned. In re Kahn, 441 F.3d 977, 987 (Fed.
Cir. 2006); see also, In re Bigio, 381 F.3d 1320, 1325 (Fed. Cir. 2004); In re
Oetiker, 977 F.2d 1443, 1447 (Fed. Cir. 1992); In re Clay, 966 F.2d 656,
658–59 (Fed. Cir. 1992); In re Wood, 599 F.2d 1032, 1036 (CCPA 1979).
The same field of endeavor test “for analogous art requires the PTO to
determine the appropriate field of endeavor by reference to explanations of
the invention’s subject matter in the patent application, including the
embodiments, function, and structure of the claimed invention.” Bigio, 381
F.3d at 1325. Moreover, “[a] reference is reasonably pertinent if, even
though it may be in a different field from that of the inventor’s endeavor, it
is one which, because of the matter with which it deals, logically would have
commended itself to an inventor’s attention in considering his problem.”
Clay, 966 F.2d at 659.
Here, the Examiner makes no finding that the prior art is directed to
the same field of endeavor as the claimed invention. Instead, the Examiner
responds to Appellant’s arguments that neither Torikoshi nor Hare are
analogous prior art by finding that these arguments are directed to the
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intended use of the membrane, i.e., a musical drumhead, which “is a claim
limitation which may not distinguish over [the] prior art,” merely requiring
the ability to be used as a drumhead. Ans. 2. The Examiner finds that most
membranes have “vibrational character,” and Torikoshi teaches use of a bi-
axially stretched PET membrane, but errs in holding that the product made
by a claimed method is not a positive limitation of the method claim. We
note that the Examiner refers to Appellant’s disclosure, in particular to
Appellant’s admission that graphic applications including dye sublimation
processes are not new in the art. However, the rejection does not rely on
such admission.
Further, the Examiner finds that Appellant has not shown that
Torikoshi’s PET membrane could not be used in the fabrication of a
drumhead. However, the Examiner, not Appellant, bears the initial burden to
establish that the claimed invention would have been prima facie obvious.
Oetiker, 977 F.2d at 1445 (“[T]he examiner bears the initial burden, on
review of the prior art or on any other ground, of presenting a prima facie
case of unpatentability”). Here, with regard to a method for producing a
graphic image on a musical drumhead, the Examiner bears the burden of
establishing that it would have been obvious to have produced a musical
drumhead using the recited process. As Appellant correctly notes, the law on
intended use applies differently for methods for making products as
compared to the products themselves.
We further note that, though the Examiner finds that Torikoshi
teaches the same process as recited in claim 13, except for transfer printing
an image onto a substrate, the Examiner fails to direct our attention to any
disclosure of a dye sublimation process entailing the transfer of a dye image
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from a substrate into the open pores of a membrane due to heat and pressure,
followed by cooling of the membrane to close these pores, nor do we find
any. Indeed, Torikoshi teaches away from sublimation-type processes
because their resolution tends to decrease with increasing printing speed and
teaches away from use of dyes due to fading. See Torikoshi ¶¶ 7, 13.
Torikoshi, therefore, favors an electrophotographic method because
resolution is maintained even with increasing printing speed and toner
pigments have excellent light resistance. Id. ¶¶ 9, 13. Thus, Torikoshi not
only is directed to a different field of endeavor, electrophotography using
toner pigment, but also does not disclose a dye sublimation method for
forming musical drumheads as recited in claim 13. As Appellant correctly
asserts, Hare does not remedy these deficiencies in Torikoshi.
Therefore, we do not sustain the Examiner’s obviousness rejection of
claim 13, or of dependent claims 2–4, 6–8, 10, and 11, over the combination
of Torikoshi and Hare. We note that the Examiner applies additional prior
art to Fujipla, Odamura, and Robbins to address limitations of dependent
claims 9 and 12. Non-Final Act. 5. These references are not relied on to, and
indeed do not, remedy the deficiencies in the combination of Torikoshi and
Hare. Accordingly, we likewise do not sustain the obviousness rejection of
claims 9 and 12 for the same reasons given above.
CONCLUSION
Upon consideration of the record, and for the reasons given above and
in the Appeal and Reply Briefs, the decision of the Examiner rejecting
claims 2–4 and 6–13 under 35 U.S.C. § 103(a) as unpatentable over
Torikoshi in view of Hare, alone or further in view of Fujipla, Odumura, and
Robbins, is reversed.
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Application 13/136,641

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DECISION SUMMARY
In summary:
Claims
Rejected
35 U.S.C.
§
Basis/Reference(s) Affirmed Reversed
2–4, 6–8,
10, 11, 13
103(a) Torikoshi, Hare 2–4, 6–8,
10, 11, 13
9, 12 103(a) Torikoshi, Hare,
Fujipla, Odumura,
Robbins
9, 12
Overall
Outcome
2–4, 6–13

REVERSED