Appeal 2007-1262
Application 10/697,532
printed-in-register wherein first a textured design is embossed on a substrate
and then a printed pattern is placed on and in registry with the so-formed
textured surface (Br. 8-9; Specification 4-5). Concerning the prior art
rejection based on Hansson, the Appellants state that Hansson teaches
forming an embossed-in-register product rather than the here-claimed
printed-in-register product (Br., para. bridging 19-20 and 20-21).
As an initial matter, the claim 1 product which is made by a printed-
in-register method appears to be indistinguishable from the above-discussed
prior art product which is made by an embossed-in-register method. For
example, in both products, a printed pattern is located on and in registry with
a textured surface. Although the textured surface of the prior art product is
formed by embossing the printed pattern and its underlying substrate
(Specification 2-3), the result is a printed pattern on top of a textured surface
as required by claim 1. Regarding this point, we emphasize that
patentability of a product claim is not based on the process by which it is
made. Scripps Clinic & Research Found. v. Genentech, Inc., 927 F.2d 1565,
1583, 18 USPQ2d 1001, 1016 (Fed. Cir. 1991).
Regardless, Appellants’ method claim 18 unquestionably requires the
sequential steps of first texturing a base coating surface and then printing a
pattern onto the textured surface in registry therewith. According to the
Examiner, it would have been obvious for an artisan to provide the method
of Hansson with this step sequence in view of Casto, thereby obtaining the
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Last modified: September 9, 2013