Ex Parte Pace et al

Patent Trial and Appeal BoardJan 9, 2019

14991835 (P.T.A.B. Jan. 9, 2019)

UNITED STA TES p A TENT AND TRADEMARK OFFICE APPLICATION NO. FILING DATE 14/991,835 01/08/2016 26231 7590 01/11/2019 FISH & RICHARDSON P.C. (DA) P.O. BOX 1022 MINNEAPOLIS, MN 55440-1022 UNITED ST A TES OF AMERICA FIRST NAMED INVENTOR Edmund L. Pace 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 ATTORNEY DOCKET NO. CONFIRMATION NO. 39798-0128004 5502 EXAMINER NGUYEN, QUANG X.L. ART UNIT PAPER NUMBER 2854 NOTIFICATION DATE DELIVERY MODE 01/11/2019 ELECTRONIC 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. Notice of the Office communication was sent electronically on above-indicated "Notification Date" to the following e-mail address(es): P ATDOCTC@fr.com PTOL-90A (Rev. 04/07) UNITED STATES PATENT AND TRADEMARK OFFICE BEFORE THE PATENT TRIAL AND APPEAL BOARD Ex parte EDMUND L. PACE and GREGORYS.BRAXTON Appeal 2018-002481 Application 14/991,835 Technology Center 2800 Before CATHERINE Q. TIMM, JEFFREY T. SMITH, and MICHAEL G. McMANUS, Administrative Patent Judges. TIMM, Administrative Patent Judge. DECISION ON APPEAL 1 STATEMENT OF THE CASE Pursuant to 35 U.S.C. Â§ 134(a), Appellant2 appeals from the Examiner's decision to reject claims 23-36 and 43 under 35 U.S.C. Â§ 112 ,r 2 and claims 23-37 and 39-43 under 35 U.S.C. Â§ 103(a) as obvious over 1 In explaining our Decision, we cite to the Specification of January 11, 2016 ("Spec."), Final Office Action of September 23, 2016 ("Final"), Appeal Brief of June 22, 2017 ("Appeal Br."), Examiner's Answer of November 1, 2017 ("Ans."), and Reply Brief of December 29, 2017 ("Reply Br."). 2 Appellant is the applicant, HBI Branded Apparel Enterprises, LLC, which, according to the Brief, is the real party in interest. Appeal Br. 2. Appeal 2018-002481 Application 14/991,83 5 Robertson3 in view ofNanno4 and Gajjar5. We have jurisdiction under 35 U.S.C. Â§ 6(b). We AFFIRM-IN-PART. The claims are directed to a method for pad printing a pattern on a textile substrate. See, e.g., claims 23, 37. Claim 37 is illustrative: 3 7. A method of printing a pattern on a textile substrate, the method comprising: positioning a textile substrate on a printing area of a pad printing machine, the textile substrate having an inner surface and an outer surface opposite the inner surface; transferring a pattern from a cliche of the pad printing machine to a printing pad of the pad printing machine, the pattern formed from a composition comprising an ink, a solvent, and a hardener, and the pattern having a depth less than a thickness of the textile substrate between the inner surface and the outer surface; and applying, with the printing pad, the pattern to one of the inner surface or the outer surface of the textile substrate positioned on the printing area, wherein the pattern comprising the composition penetrates the inner surface or the outer surface of the textile substrate to a depth less than the thickness of the textile substrate, wherein the pattern is substantially not visible from the other surface of the inner surf ace or the outer surface. Appeal Br. 17 (claims appendix). 3 Robertson et al., US 6,516,716 Bl, issued Feb. 11, 2003. 4 Nanno, JP 05345874 A, published Dec. 27, 1993. 5 Gajjar, US 3,343,241, issued Sept. 26, 1967. 2 Appeal 2018-002481 Application 14/991,83 5 The other independent claim, claim 23, further requires the pattern comprise product label information that forms a tagless product label on the textile. Appeal Br. 15 ( claims appendix). Claim 23 also requires that the printed pattern be "readable following at least fifty launderings." Id. OPINION Indefiniteness The Examiner determines that claims 23-36 and 43 are indefinite for two reasons. First, the Examiner determines the limitation in claim 23 reciting "the transferred pattern being printed on the textile substrate such that the pattern is readable following at least fifty launderings" is unclear because "the limitation does not clearly convey what is entailed in each laundering process." Final 4. Second, the Examiner determines claim 43 is indefinite because it depends from claim 1, a canceled claim. Id. Claim 23 Turning first to the "fifty launderings" language of claim 23, we agree with Appellant that the ordinary artisan would understand the meaning of this language when it is read in the context of the Specification. The Specification discloses that the "present invention relates to the field of apparel, and, more particularly to apparel having tagless labels or other patterns pad printed thereon." Spec. 1: 10-11. The Specification discloses problems with prior art labeled garments. Namely, that garments with adhesively affixed labels cannot be laundered and that transfer-printed garment labels cannot withstand repeated laundering and wear off after only a few home washings. Spec. 1 :21-23, 2:4--5. Appellant's improvement is in the use of pad printing to apply the label indicia which, according to the 3 Appeal 2018-002481 Application 14/991,83 5 Specification, results in a product label that "has a high durability to repeated launderings" and that "will readily withstand more than 50 home launderings without any appreciable fading." Spec. 6: 16-20. "[T]he definiteness of the language employed must be analyzed-not in a vacuum, but always in light of the teachings of the prior art and of the particular application disclosure as it would be interpreted by one possessing the ordinary level of skill in the pertinent art." In re Moore, 439 F.2d 1232, 1235 (CCPA 1971). Given that the pattern is to be used as a product label on a garment, and garments are normally washed either by hand or washing machine, it follows that the ordinary artisan would understand "laundering" to mean conventional hand or machine washing in which the garment is fully immersed in detergent-containing water for an amount of time sufficient to clean the garment. Claim 43 Appellant does not address the Examiner's determination that claim 43 is indefinite for depending from canceled claim 1. We summarily sustain the rejection of claim 43 under 35 U.S.C. Â§ 112 ,r 2. Obviousness Turning to the Examiner's rejection of claims 23-37 and 39--43 as obvious over Robertson in view ofNanno and Gajjar, we agree with Appellant that the evidence fails to support the Examiner's combination of Robertson and Nanno and that the rejection is based on improper hindsight. Final 5-6, 8-9; Appeal Br. 8-9; Reply Br. 4. Robertson discloses a method of pad printing, but fails to disclose the types of products that were known to be pad printed. Robertson merely 4 Appeal 2018-002481 Application 14/991,83 5 refers to products generically without identifying the nature of the products. Robertson col. 1, 11. 19-30, col. 3, 11. 13-16. Nanno discloses a radiation curable ink composition containing metal- powder that has improved storage stability and color tone and photoluminescence stability after printing. Nanno ,r,r 1, 11. After describing the composition of the ink, Nanno states that the composition can be used in a variety of printing methods and further that the substrate to be printed is not particularly limited. Specifically, Nanno discloses: As a printing method, offset printing is preferable, in addition lithography, Toppan Printing, screen printing, pad printing, etc. are adopted. A printing object thing does not have the limitation in particular including paper, plastics, metal, a wood slab, glass, and textiles. Not only pattern printing but an overall print is possible. After printing irradiates active energy lines, such as ultraviolet rays and an electron beam, and attains hardening. Nanno ,r 25. Nanno's disclosure is general. It only states that pad printing is one of a number of printing processes in which the ink can be used and that the ink may be printed on any substrate, one of which may be textile. Which of the methods the ordinary artisan would know to select to print on textile substrates is not conveyed. The ordinary artisan may, for example, select screen printing to print on textiles. Nanno does not convey that the ordinary artisan would have known that pad printing could be used to print textiles. Appellant's Specification provides some evidence that those of ordinary skill in the art would not have selected pad printing to print textiles. According to the Specification, "[p ]ad printing was developed for printing on irregular shaped solid objects such as golf balls, coffee mugs, and the 5 Appeal 2018-002481 Application 14/991,83 5 like. Thus, pad printing has not heretofore been known for printing patterns on permeable textile substrates." Spec. 2: 10-13. Given the disclosure in the Specification, the Examiner had to provide evidence that pad printing was known to be used to print patterns on textile substrates. Nanno's disclosure fails to provide the requisite disclosure. Thus, we agree with Appellant that the evidence fails to support the Examiner's combination of Robertson and Nanno and that the rejection is based on improper hindsight. In summary: 23-36, 43 23-37, 39-43 Â§ 103(a) Summar CONCLUSION Robertson, Nanno, GaÂ·Â·ar DECISION 43 43 The Examiner's decision is affirmed-in-part. TIME PERIOD FOR RESPONSE 23-36 23-37, 39-43 23-37, 39-42 No time period for taking any subsequent action in connection with this appeal maybe extended under 37 C.F.R. Â§ 1.136(a)(l). AFFIRMED-IN-PART 6