Appeal No. 1998-0273
Application 08/285,892
(Reed) or Klinker et al. (Klinker).2 We can sustain the rejection of appealed claim 14 under 35 U.S.C.
§ 112, second paragraph, as being indefinite for failing to particularly
point out and distinctly claim the subject matter which applicants regard as the invention.3
It is well settled that “[t]he consistent criterion for determination of obviousness is whether the
prior art would have suggested to one of ordinary skill in the art that [the claimed process] should be
carried out and would have a reasonable likelihood of success viewed in light of the prior art. [Citations
omitted] Both the suggestion and the expectation of success must be founded in the prior art, not in the
applicant’s disclosure.” In re Dow Chem. Co., 837 F.2d 469, 473, 5 USPQ2d 1529, 1531 (Fed.
Cir. 1988). Thus, a prima facie case of obviousness is established by showing that some objective
teaching, suggestion or motivation in the applied prior art taken as a whole and/or knowledge generally
available to one of ordinary skill in the art would have led that person to the claimed invention as a
whole, including each and every limitation of the claims, without recourse to the teachings in appellants’
disclosure. See generally, In re Rouffet, 149 F.3d 1350, 1358, 47 USPQ2d 1453, 1458 (Fed. Cir.
1998); Micro Chemical Inc. v. Great Plains Chemical Co., 103 F.3d 1538, 1546, 41 USPQ2d
1238, 1244-45 (Fed. Cir. 1997); Pro-Mold and Tool Co. v. Great Lakes Plastics Inc., 75 F.3d
1568, 1573, 37 USPQ2d 1626, 1629-30 (Fed. Cir. 1996); In re Oetiker, 977 F.2d 1443, 1447-48,
24 USPQ2d 1443, 1446-47 (Fed. Cir. 1992) (Nies, J., concurring); In re Fine, 837 F.2d 1071,
1074-76, 5 USPQ2d 1596, 1598-1600 (Fed. Cir. 1988); Dow Chem., 837 F.2d at 473, 5 USPQ2d
at 1531-32.
379 F.2d 1011, 1014-17, 154 USPQ 173, 176-78 (CCPA 1967).
The plain language of appealed claims 11, drawn to a method of transferring an image onto a
backing of textile fabric, specifies a transfer sheet consisting essentially of at least a plain paper
substrate, which does not have a release treatment or coating applied thereto, and a transfer coating of
thermoplastic polymeric film material bonded to one side of the plain paper substrate, wherein a toner
image can be formed on and fused onto the thermoplastic film, and no adhesive overcoating or solvent
layer is on the thermoplastic film. In similarly plain language, a transfer sheet consisting essentially of the
2 Answer, pages 4-5.
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