Ex parte MAHN et al. - Page 4




          Appeal No. 1997-3266                                                        
          Application 08/374,960                                                      


          indicia (answer, page 3).  Regarding appellants’ heat                       
          activated transfer, the examiner argues that column 2, lines                
          9-39 of Borresen disclose a thermoset layer placed onto a                   
          cloth substrate (answer, pages 3 and 6).  This portion of the               
          reference discloses, as examples of suitable substrate                      
          materials, textiles, thermoplastic materials, thermosetting                 
          materials, and lacquered aluminum sheets, and teaches that                  
          “[e]ven the objects to be decorated may be made of the above-               
          mentioned plastics materials or may be provided with coatings               
          of such materials, e.g., by lacquering” (col. 2, lines 24-26).              
          This quoted portion, the examiner argues, is a teaching that                
          the substrate can be a textile coated with a thermosetting                  
          material (answer, page 3).  The examiner, however, does not                 
          explain why the reference reasonably would have led one of                  
          ordinary skill in the art to this particular combination.                   
               Even if Borresen is considered to have suggested, as a                 
          substrate, a textile coated with a thermoset material, the                  
          reference does not disclose a heat activatable adhesive                     
          between the thermoset material and the textile.  For a                      
          suggestion of this claim requirement the examiner relies upon               
          Yamane (answer, page 4).  Yamane discloses forming a laminate               
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