Sernaker, In re, 82-579
| Decision Date | 28 February 1983 |
| Docket Number | No. 82-579,No. 916,018,82-579,916,018 |
| Citation | 702 F.2d 989,217 USPQ 1 |
| Parties | In re Howard SERNAKER. AppealSerial |
| Court | U.S. Court of Appeals — Federal Circuit |
Michael F. Petock, Philadelphia, Pa., argued and filed briefs for appellant.
Associate Sol. Fred W. Sherling, Washington, D.C., argued for Patent and Trademark Office. With him on the brief was Sol., Joseph F. Nakamura, Washington, D.C.
Before DAVIS, Circuit Judge, COWEN, Senior Circuit Judge, and NICHOLS, Circuit Judge.
This case is before us on appeal from the decision of the Patent and Trademark Office Board of Appeals (board). In a 2-1 decision, the board affirmed the examiner's rejection, under 35 U.S.C. Sec. 103, of claims 1-6 and 8-11 in appellant's application serial No. 916,018, filed June 15, 1978, entitled "Embroidered Transfer and Method of Making." These claims comprise all the claims in the case. We reverse.
Appellant has invented a type of embroidered emblem and a method of making the same. Claims 1 and 10, the only independent claims in appellant's application, are representative of the method and of the emblem, respectively:
1. A method of making an embroidered transfer or emblem comprising the steps of:
(e) transferring color from said print as a gas to the warp side of the pattern while applying sufficient heat to sublime said dyestuff.
10. An embroidered transfer emblem comprising an embroidered pattern on one side of a substrate whose size corresponds to the size of the pattern with thread of a single color which is free of needle oil, portions of the pattern having a sculptured effect by an increased number of thread stitches, at least two colors of dyestuff printed on the thread stitches defining said portions and on other portions of the pattern, said colors being in registry with said sculptured portions of said pattern with at least one of said printed portions including printing outlining a configuration on a portion of said pattern, and said colors being printed on the warp side of said pattern.
The remaining claims are either dependent on method claim 1 (claims 2-6) or on article claim 10 (claims 8, 9 and 11). For example, claim 2 defines a method in accordance with claim 1 of "applying a thermoplastic adhesive to the shuttle side of the thusly printed pattern." Since neither of the parties argue separately the patentability of each of the rejected claims, the dependent claims will stand or fall with independent claims 1 and 10. In re Burckel, 592 F.2d 1175, 1178-79, 201 U.S.P.Q. 67, 70 (Cust. & Pat.App.1979).
The claim language includes several key phrases that we should define at the outset. When the inventor uses "registering" and "in registry," he appears by the context to mean placing or placed in correspondence. A "substrate" literally means a basis on which an organism lives, as a plant on the soil. Another common definition of the term in scientific circles is any solid surface on which a coating or layer of different material is deposited. Under both definitions, application to an embroidery is an understandable analogy.
The record includes samples of the "emblems" made by the claimed method, as completed, and in intermediate stages. As completed, the "emblems" are justly characterized by the board as "extremely attractive." They are apparently badges affixed to garments to convey messages about the loyalties, affiliations, tastes, and preferences of the wearer. Would that we judges had something of the sort to brighten up our robes!
The emblem produced by appellant's method resembles an emblem initially embroidered with different colored threads. Appellant's method, however, circumvents the need to embroider the desired pattern with these different colored threads. Rather, a manufacturer following appellant's method first embroiders the pattern with thread of one color on a substrate, separates the embroidery and its associated substrate from the rest of the substrate, and then essentially dyes the threads different colors by use of a transfer print. Such a transfer print consists of two or more dyestuffs on a piece of paper arranged in a pattern mirroring in shape or "mating" the pattern of the embroidery. By placing the transfer print over the embroidery so that the dyestuffs face the embroidery and match its pattern, and then by applying heat and pressure or vacuum conditions, the dyestuffs on the paper will sublime and then adhere to the matching portion of the embroidery.
Before appellant's invention, a manufacturer would use the Schiffli embroidery machine alone to mass produce embroidery. This large machine, however, cannot stitch thread of more than one color at a time. Thus, to create multicolored patterns, the machine would be shut down after each separate color had been embroidered so its
684 needles could be rethreaded with the next color thread. Since each rethreading procedure takes about 45 minutes, the number of different colors that were commercially feasible to use in a single emblem was limited. With appellant's invented method, on the other hand, a manufacturer can produce an emblem of many colors because he need not rethread the machine anew for each desired color. Instead, only one color (usually white) is used for the entire embroidered pattern, and then the pattern is dyed different colors with one multicolored transfer print.
The references relied upon by the board are:
Haigh 3,657,060 April 18, 1972
Cox 3,974,010 August 10, 1976
Sernaker 4,092,451 May 30, 1978
British patent 1,243,223 August 18, 1971
Miles, L.W.C., Journal of the Society of Dyers and Colorists, May 1977, pages 161-163.
Vellins, British Knitting Industry, Vol. 46, No. 524, January 1973, pages 45, 46, 48, 50, 53, 55, 57, 59, 63, 65, 67, and 69.
The Butterick Fabric Handbook, Published by Butterick Publishing, A Division of American Can Company, New York, New York, 1975, pages 99, 100, 119-121, and 142.
The British patent discloses a process of transfer printing on all types of textile articles regardless of their fibers, and a like process of printing on a variety of non-textile articles. With respect to transfer printing on textile articles, the British patent recites a general line of materials to which the process may be applied:
* * * [F]leeces or webs of non-woven fibers, textile threads, woven webs, knitted material, lace, spongy material in sheet form or already shaped, or even made up articles of clothing.
[British, page 1, lines 68-72.]
The British patent does not specifically mention embroidery as an article susceptible to transfer printing. This patent does, however, teach that a multicolored design may be transferred to textile articles, generally, from a transfer print:
* * * [S]everal dyes of different colours can be applied on the same support [of the transfer print], these dyes being either intimately mixed or distributed in order to form the designs which are to be transferred to the textile articles.
[British, page 2, lines 44-48, emphasis supplied.]
The Miles reference teaches that transfer printing can be done on a variety of substrates, such as substrates of polyester and of carpet tile. Miles specifically states that when transferring designs from a paper transfer print to fiber, perfect contact is not necessary because of the vapor state of the dye when it transfers. Although Miles exhibits an awareness of embroidery procedures, he does so in the context of describing the transfer of embroidered patterns onto nonembroidered surfaces; Miles does not teach transfer printing on embroidery itself. Vellins not only teaches transfer printing on a variety of textile substrates (including carpet), but also teaches the deleterious effects of transfer printing on a polyester substrate that contains lubricating oil and other such substances.
The remainder of the references concern various embroidery techniques and methods of producing embroidered emblems, rather than teachings about transfer printing. Butterick reveals that white-on-white embroidery, such as embroidery decoration on a white tablecloth, is commonly made. Butterick also teaches that designs formed in lace can be outlined with embroidery stitching; Butterick defines this entire piece of lace as "re-embroidered lace."
The Haigh patent discloses an embroidered emblem comprised of an embroidered design stitched onto a woven fabric backing material with an embroidered border, and a thermoplastic adhesive bonded to the other side of the backing material.
The Cox patent discloses a method of preparing articles of "aetzed" embroidery whereby a design is embroidered directly onto a backing of thermoplastic material The Sernaker patent, issued to appellant in this case, discloses an embroidered transfer wherein a pattern is embroidered onto one side of a diaphanous material with the Schiffli machine, and a layer of adhesive is applied to the other side of this material. When this transfer is ironed onto a base fabric, the diaphanous material melts into the fabric and disappears from view; the transfer thus assumes the appearance of a pattern that is directly embroidered onto the base fabric.
the design and backing are ironed onto a transfer strip, and then the transfer strip is removed taking with it all parts of the backing...
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