Christian Fuhse et al.

Patent Trials and Appeals Board

May 19, 2020

13807814 - (D) (P.T.A.B. May. 19, 2020)

UNITED STATES PATENT AND TRADEMARK OFFICE
UNITED STATES DEPARTMENT OF COMMERCE
United States Patent and Trademark Office
Address: COMMISSIONER FOR PATENTS
P.O. Box 1450
Alexandria, Virginia 22313-1450
www.uspto.gov
APPLICATION NO. FILING DATE FIRST NAMED INVENTOR ATTORNEY DOCKET NO. CONFIRMATION NO.
13/807,814 12/31/2012 Christian Fuhse 19838.56 5073
22913 7590 05/19/2020
Workman Nydegger
60 East South Temple
Suite 1000
Salt Lake City, UT 84111
EXAMINER
GRABOWSKI, KYLE ROBERT
ART UNIT PAPER NUMBER
3638
NOTIFICATION DATE DELIVERY MODE
05/19/2020 ELECTRONIC
Please find below and/or attached an Office communication concerning this application or proceeding.
The time period for reply, if any, is set in the attached communication.
Notice of the Office communication was sent electronically on above-indicated "Notification Date" to the
following e-mail address(es):
Docketing@wnlaw.com
PTOL-90A (Rev. 04/07)

UNITED STATES PATENT AND TRADEMARK OFFICE
____________

BEFORE THE PATENT TRIAL AND APPEAL BOARD
____________

Ex parte CHRISTIAN FUHSE, MICHAEL RAHM, and
ANDREAS RAUCH

Appeal 2019-006229
Application 13/807,814
Technology Center 3600
____________

Before STEFAN STAICOVICI, MICHAEL J. FITZPATRICK, and
AMANDA F. WIEKER, Administrative Patent Judges.

FITZPATRICK, Administrative Patent Judge.

DECISION ON APPEAL
Appellant1 appeals under 35 U.S.C. § 134(a) from the Examiner’s
non-final decision rejecting claims 19–29 and 31–36. We have jurisdiction
under 35 U.S.C. § 6(b).
We affirm.

1 “Appellant” refers to the applicant as defined in 37 C.F.R. § 1.42.
Appellant identifies “GIESECKE+DEVRIENT CURRENCY
TECHNOLOGY GMBH” as the sole real party interest. Appeal Br. 2.
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STATEMENT OF THE CASE
The Specification
The Specification “relates to a security element for a security paper,
value document or the like, as well as to a value document having such a
security element.” Spec. ¶1.
The Claims
Claims 19–29 and 31–36 are rejected. Non-Final Act. 1. No other
claims are pending. Id. Claim 19, the sole independent claim, is reproduced
below.
19. A security element for a security paper or value
document comprising:
a carrier comprising a motif region which provides a
visually perceptible motif having a first and a second motif part,
wherein the motif region comprises a first micro-optic
representation arrangement which presents at least two different
images in viewing angle-dependent fashion as a first motif part,
and a second micro-optic representation arrangement which
presents a reflective surface as the second motif part, said
reflective surface imitating a bulge relative to the actual
macroscopic spatial form of the second micro-optic
representation arrangement, and
wherein the second micro-optic representation
arrangement has embossed microscopic structures which are
furnished with a continuous reflection enhancing coating.
Appeal Br. 21.
The Examiner’s Rejections
The rejections before us are:
1. claims 19–29 and 31–36 under 35 U.S.C. § 112 ¶1 for lacking
adequate written description (Non-Final Act. 3);
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2. claims 19–24, 27–31, and 33–36 under 35 U.S.C. § 103(a) as
unpatentable over Kaule2 and Ohala3 (id. at 54);
3. claim 24 under 35 U.S.C. § 103(a) as unpatentable over Kaule,
Ohala, and Commander5 (id. at 7);
4. claims 25 and 26 under 35 U.S.C. § 103(a) as unpatentable over
Kaule, Ohala, and Ryzi6 (id.); and
5. claim 32 under 35 U.S.C. § 103(a) as unpatentable over Kaule,
Ohala, and Schilling7 (id. at 88).

DISCUSSION
Rejection 1—Written Description
The Examiner found that the Specification lacks an adequate written
description for the “continuous” aspect of claim 19’s recitation of “wherein
the second micro-optic representation arrangement has embossed
microscopic structures which are furnished with a continuous reflection
enhancing coating.” See Non-Final Act. 4 (“The newly amended recitation
‘wherein the second micro-optic representation arrangement has embossed
microscopic structures which are furnished with a continuous reflection
enhancing coating. [emphasis added]’ is not support by the originally filed

2 US 2008/0160226 A1, published July 3, 2008 (“Kaule”).
3 US 5,105,306, issued April 14, 1992 (“Ohala”).
4 The heading of this rejection includes claim 32, but the analysis omits any
discussion of claim 32.
5 US 2012/0268819 A1, published Oct. 25, 2012 (“Commander”).
6 US 2004/0247874 Al, published Dec. 9, 2004 (“Ryzi”).
7 US 2006/0072225 Al, published Apr. 6, 2006 (“Schilling”).
8 The heading of this rejection lists claim 33, but the analysis addresses
claim 32.
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disclosure.”). The Examiner accordingly rejected claim 19, as well as
claims 20–29 and 31–36, all of which ultimately depend from claim 19. Id.
at 3–4.
Appellant does not dispute that the Specification as filed lacks in haec
verba support for the limitation while arguing there is no such legal
requirement. Appeal Br. 7–8. We agree there is no such legal requirement.
See, e.g., Purdue Pharma L.P. v. Faulding, Inc., 230 F.3d 1320, 1323 (Fed.
Cir. 2000) (“In order to satisfy the written description requirement, the
disclosure as originally filed does not have to provide in haec verba support
for the claimed subject matter at issue.”).
However, the law does require that the Specification as filed convey
with reasonable clarity to those skilled in the art that the inventor was in
possession of the invention, as now claimed. Purdue Pharma, 230 F.3d at
1323. Attempting to show such possession, Appellant directs us to various
paragraphs and Figures of the Specification. Appeal Br. 8–9. In particular,
Appellant directs us to paragraph 37, which states:
In an advantageous realization, in the first embossing
lacquer layer there are embossed micro-imaging elements of the
first micro-optic representation arrangement and microscopic
structures, for example sawtooth structures or Fresnel structures,
of the second micro-optic representation arrangement, the
microscopic structures being furnished with a reflection-
enhancing coating. In the second embossing lacquer layer there
are embossed microstructures of the first micro-optic
representation arrangement, which are imaged in magnified form
by means of the micro-imaging optic, in order to present the at
least two different images in viewing angle-dependent fashion.
The micro-imaging elements can be refractive or reflective
elements. If they are reflective elements, these are preferably
also furnished with a reflection-enhancing coating. Preferably,
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the application of the coating is carried out in one step for the
microimaging elements and the microscopic structures.
Spec. ¶ 37 (emphasis added).
Appellant argues that, because “[t]he reflection enhancing or mirror
coating of these embodiments is described in singular form and as a coating
that can be applied in one step, [it] would necessarily be understood by one
skilled in the art as an unbroken whole, or a continuous coating, over
embossed microscopic structures.” Appeal Br. 8 (citing Spec. ¶37).
However, this disclosure and the other portions of the Specification cited by
Appellant, at best, would render the claim obvious. But that is not
sufficient. See Ariad Pharms., Inc. v. Eli Lilly & Co., 598 F.3d 1336, 1352
(Fed. Cir. 2010) (en banc) (“[W]hile the description requirement does not
demand any particular form of disclosure, or that the specification recite the
claimed invention in haec verba, a description that merely renders the
invention obvious does not satisfy the requirement.”).
Further, as the Examiner points out, the Specification’s Figures
undercut Appellant’s argument. See Ans. 3 (“It is notable that in every
single figure the metal coating (18) directly points to only the flanks (and
never the perpendicular structures adjacent the flanks).”).
In reply, Appellant argues that “reference sign 18 is not defined as a
metal coating in the specification, but instead is defined as ‘Facets’.” Reply
Br. 3. That is true. But the Examiner’s point remains that the perpendicular
structures adjacent the facets (18) are not themselves facets, and the
Specification does not describe the perpendicular structures having a
reflection enhancing coating. See, e.g., Spec. ¶69 (“The facets 18 can be
formed in the same way as the micro-concave mirrors 28 by embossing and
mirror-coating.”), ¶73 (“[T]he micro-concave mirrors 28 and the facets 18
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can be metallized differently, for example with different metals or coatings
with color-shifting effects (e.g. thin-film systems in which the color varies in
dependence on the viewing angle).”
Appellant does not apprise us of error in the rejection of claims 19–29
and 31–36 under 35 U.S.C. § 112 ¶1 for lacking adequate written
description. Rejection 1 is affirmed.
Rejection 2—Obviousness in view of Kaule and Ohala
Appellant argues for reversal of Rejection 2 solely on the basis that
independent claim 19 is not unpatentable over Kaule and Ohala. Appeal
Br. 11–19.
Kaule discloses “a security element for protecting valuable articles,
having a first and a second authenticating feature.” Kaule, Abstract. The
Examiner found that Kaule discloses all of the subject matter of claim 19,
“including reflective facets” but not does not disclose them as “imitating a
bulge relative to the actual macroscopic spatial form of the second micro-
optic representation arrangement,” as recited in claim 19. Non-Final Act. 5
(citing Kaule ¶¶149, 185, 186, Figs. 1, 19). The Examiner found that “Ohala
teach[es] providing a scattering structure ‘appearing bulged relative to the
actual macroscopic spatial form’.” Id. (citing Ohala, Abstract, Fig. 1). The
Examiner concluded:
It would have been obvious to one of ordinary skill in the art at
the time the invention was made to modify the scattering
structure taught in Kaule et al. as a “reflective surface appearing
bulged relative to the actual macroscopic spatial form” in view
of Ohala to create a replication of a 3D structure with a small
array of flatter elements.
Id. (citing Ohala 1:48–64).
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Appellant argues that the Examiner’s obviousness rejection “is devoid
of any rational underpinning” because it “fails to establish how Ohala’s
teachings could be seen as an improvement that would have applicability to
the security element of Kaule.” Appeal Br. 12–13. The reasoning offered
by the Examiner is based on Kaule’s second motif part being described as
“an embossed diffractive or scattering structure.” Kaule ¶186 (emphasis
added); see also Non-Final Act. 5 (referring to Kaule’s “scattering structure”
and finding “a scattering structure by definition constitutes ‘reflective facets
that have different orientations with respect to each other.’”). Appellant’s
arguments are not commensurate with the Examiner’s stated reasoning.
Instead, Appellant’s arguments repeatedly focus on Kaule’s “diffractive . . .
structure,” which is not the teaching upon which the Examiner relies as a
reason for incorporating, into Kaule, Ohala’s teachings regarding a reflective
facet structure. See, e.g., Appeal Br. 14 (“The specific arrangement of Kaule
is intended to improve on the disadvantages of diffraction structures known
in the prior art.”); id. (“In contrast to Kaule, Ohala . . . provides no
consideration of improved security, machine and/or visual verifiability, or of
advantages over a diffraction structure in a security element.”).
Appellant argues that “one of ordinary skill in the art would
understand that, in order to have the desired effect of Ohala, gaps between
the facets are required and the reflective material must be restricted to
individual facets only, i.e. not continuous.” Appeal Br. 16. We are not
persuaded that Appellant’s conclusion is dictated by the cited Ohala
disclosure. Regardless, Appellant has not challenged the Examiner’s finding
that the “continuous” limitation is taught by Kaule (in addition to Ohala).
More specifically, the Examiner found that Kaule “disclose[s] that the
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scattering structure which forms the second motif part may have a reflection
enhancing coating that is continuous.” Non-Final Act. 5–6 (citing Kaule
¶186). This finding is unrebutted by Appellant.
Appellant next argues that “one of ordinary skill in the art would
recognize that the procedure described in Ohala is only technically possible
for sections having dimensions in the range disclosed in Ohala, with
diameters of about 1 mm or more for each section” whereas “the scale in
Kaule would be at least one magnitude smaller.” Appeal Br. 16 (citing
Ohala 3:14–18 and 3:30–33; Kaule claims 6 and 31). This argument is not
persuasive because its characterization of both references is erroneous.
Ohala is not limited to diameters of 1 mm or more. Rather, Ohala
states that, under certain circumstances (i.e., “for replica scenes viewed at
normal reading distance (about 50 cm.)”) the diameters “would probably” be
“no larger than 1 mm or so.” Ohala 3:14–16. This is hardly a definitive
minimum. Moreover, Ohala later discloses that “[m]inimum diameters
would be more a function of the method of implementation and not the
invention itself.” Id. at 3:28–29. Likewise, Kaule is not limited to the
diameters specified in dependent claims 6 and 31. In fact, the presence of
claims 6 and 31 in Kaule imply that Kaule is not so limited. See 35 U.S.C.
§ 112 ¶4 (“[A] claim in dependent form shall contain a reference to a claim
previously set forth and then specify a further limitation of the subject matter
claimed.”).
Appellant also argues that the proposed modification would have not
have been obvious because Kaule is “directed to ‘a security element for
protecting valuable articles’ from unauthorized reproduction” whereas
Ohala’s teachings are “decorative [in] nature.” Appeal Br. 17–18 (quoting
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Kaule, Abstract). To the extent Appellant is arguing that Ohala is not
analogous, it has wholly failed to make the case. “Two criteria have evolved
for determining whether prior art is analogous,” In re Clay, 966 F.2d 656,
658–59 (Fed. Cir. 1992), and Appellant has not addressed either, let alone
both.
Because Appellant does not apprise us of error in the rejection of
claim 19, Rejection 2 is affirmed.
Rejections 3–5—Obviousness in view of Kaule, Ohala, and Additional Art
Appellant argues for reversal of Rejections 3, 4, and 5 solely on the
basis that the additional references, i.e., Commander, Ryzi, and Schilling, do
not overcome the purported deficiency in the rejection of independent claim
19 as unpatentable over Kaule and Ohala. Id. at 19.
Because Appellant does not apprise us of error in the rejection of
claim 19 (Rejection 2), Appellant likewise does not apprise us of error in
Rejections 3, 4, and 5. Rejections 3, 4, and 5 are affirmed.
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SUMMARY
Claims
Rejected
35 U.S.C. § References/Basis Affirmed Reversed
19–29, 31–
36
112 ¶1 Written
description
19–29, 31–
36

19–24, 27–
31, 33–36
103(a) Kaule, Ohala 19–24, 27–
31, 33–36

24 103(a) Kaule, Ohala,
Commander
24
25, 26 103(a) Kaule, Ohala,
Ryzi
25, 26
32 103(a) Kaule, Ohala,
Schilling
32
Overall
Outcome
19–29, 31–
36

No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. § 1.136(a). See 37 C.F.R.
§ 1.136(a)(1)(iv).
AFFIRMED