Appeal No. 1998-0273
Application 08/285,892
same elements is specified in appealed claim 17, drawn to that transfer sheet. It seems to us that the
examiner’s position is that one of ordinary skill in this art would have found in the teachings of Reed,
wherein the transfer sheet can be an image printed on
plain paper that is overcoated with an adhesive, and of Klinker, wherein the transfer sheet can be a plain
paper coated with a release layer and then a sandwich of primer, image and adhesive overcoat layers,
the motivation to use plain paper instead of release paper in the transfer sheets of Xerox, wherein a
polymer coated on the release paper receives an image from a copy machine, and of Hare, wherein the
release paper is coated first with an adhesive polymer layer and then with a layer of resin and abrasive
particles which receives the image, with the expectation of avoiding the expense of a release coating, a
desideratum in the art as discussed in Reed (col. 1). We cannot agree.
As pointed out by appellants in the brief and reply brief, each of Hare, Reed and Klinker
disclose transfer sheets of a different structure than that claimed and include at least one component that
is specifically excluded from the claimed transfer sheet. The only transfer sheet which has a structure
that resembles the claimed transfer sheet and actually differs solely from the claimed transfer sheet by
the use of release paper instead of plain paper is disclosed by Xerox. We find that the examiner has
failed to establish by evidence or scientific explanation why a transfer sheet which requires an adhesive
overcoat on printable paper or a transfer sheet that requires a release coating on paper would have
suggested that such plain paper could replace the release paper used with the particular polymer in
Xerox. Indeed, the examiner has not shown that one of ordinary skill in this art would have recognized
that the relationship between the paper and the coatings thereon in Reed and Klinker would exist
between plain paper and the image receiving polymer in Xerox, such that the interchange would result in
an operable transfer sheet, that is, the modification would not render the transfer sheet of Xerox
inoperable to function in the intended manner. Furthermore, even if the examiner did provide a showing
with respect to the transfer sheet of Hare, the interchange of the release paper of this transfer sheet with
plain paper still would not have resulted in the transfer sheet specified in claims 11 and 17.
3 Answer, pages 3-4.
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