Appeal No. 1999-2485
Application 08/737,118
does show the particular printing process for which that reference is cited by the examiner, there
is nothing in the general nature of the disclosure of the printing process in the context of the
invention disclosed in each reference which would have suggested to one of ordinary skill in this
art that other printing processes than those disclosed in Nakasuka can be used for preparing the
transfer paper taught in this reference. Thus, at best, the examiner has shown only that
rotogravure printing processes are known. See, e.g., Hurst, col. 2, lines 10-11: “Such printing [of
a pattern on lacquer] may be carried out by the screen process, roto-gravure or other orthodox
techniques.”
Indeed, with respect to the process of appealed claim 15, the applied prior art does not
suggest employing multiple printable ink compositions in “cups” on the rotogravure cylinder
which have a depth of 20 µm to 60 µm. The only description of a gravure apparatus in the prior
art applied by the examiner is provided by Nakayama in disclosing a “print plate having fine-
groove-shaped gravure cells communicated with one another, and independent banks . . . and a
plate depth of 20 µm” (col. 6, lines 46-49; see also col. 4, lines 14-19, and FIGs. 2 and 3). Thus,
the “cells” are “groove-shaped” rather than “cups,” and the plate, not the “cups,” has a “depth of
20 µm,” and is used to provide “fine lines . . . by special gravure printing” as “compared with
general gravure printing by which paint is printed in the form of a set of a large number of
points” (col. 4 lines 44-52).
Thus, we reverse both grounds of rejection. Cf. In re Warner, 379 F.2d 1011, 1016, 154
USPQ 173, 177 (CCPA 1967) (“Thus, where the invention sought to be patented resides in a
combination of old elements, the proper inquiry is whether bringing them together was obvious
and not, whether one of ordinary skill having the invention before him, would find it obvious
through hindsight to construct the invention from elements of the prior art.”).
3 This reference was supplied by appellant in the information disclosure statement of March 27,
1997 (Paper No. 8) and considered by the examiner on October 30, 1997 as seen from the signed
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