Ex Parte Behm et al

Patent Trials and Appeals Board

Jun 13, 2019

13092263 - (D) (P.T.A.B. Jun. 13, 2019)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE
13/092,263 04/22/2011
134668 7590 06/17/2019
Dority & Manning, P.A. and Scientific Games
International, Inc.
P.O. Box 1449
Greenville, SC 29602-1449
FIRST NAMED INVENTOR
William F. Behm
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
ATTORNEY DOCKET NO. CONFIRMATION NO.
SGI-1217 6186
EXAMINER
GRABOWSKI, KYLE ROBERT
ART UNIT PAPER NUMBER
3638
NOTIFICATION DATE DELIVERY MODE
06/17/2019 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):
usdocketing@dority-manning.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte WILLIAM F. BEHM and KENNETH EARL IRWIN JR. 1
Appeal2018-004728 2
Application 13/092,263
Technology Center 3600
Before JAMES T. MOORE, MEREDITH C. PETRA VICK, and
ALYSSA A. FINAMORE, Administrative Patent Judges.
PETRA VICK, Administrative Patent Judge.
DECISION ON APPEAL
STATEMENT OF THE CASE
William F. Behm and Kenneth Earl Irwin, Jr. ( collectively "Appellant") seek
our review under 35 U.S.C. § 134(a) of the final rejection of claims 1, 5-7, 9,
1 Appellant identifies Scientific Games International, Inc. as the real party in
interest. App. Br. 1. The latest assignment also indicates Bally Gaming, Inc. is a
real party in interest with Deutsche Bank Trust Company Americas holding a
collateral security interest. Reel/Frame: 045909/0513.
2 Our Decision references the Appeal Brief ("App. Br.," filed June 13, 2016), the
Reply Brief ("Reply Br." filed Mar. 28, 2018), the Final Office Action ("Final
Act.," mailed Feb. 10, 2016), and the Examiner's Answer ("Ans.," mailed Jan. 30,
2018).
Appeal2018-004728
Application 13/092,263
11-30, 32, 34--36, 39, and 40. Appellant canceled claims 2--4, 8, 10, 31, 33, 37,
and 38. We have jurisdiction under 35 U.S.C. § 6(b).
SUMMARY OF THE DECISION
We AFFIRM-IN-PART.
SUBJECT MATTER ON APPEAL
The invention "relates generally to documents, such as lottery tickets, having
indicia under a scratch-off- coating (SOC), and more particularly to methods for
enhancing the security of the documents without detracting from the aesthetics of
the documents." Spec. 1. Claim 1, reproduced below, is illustrative of the claimed
subject matter on appeal.
1. A security-enhanced document, comprising:
a bare, white substrate defining a bottom-most layer of the
security-enhanced document;
indicia provided directly on said bare, white substrate, said
indicia comprising pigmented nanoparticles in process color
applied directly to said white substrate without an intervening
layer in a printing process to form pigmented-particle indicia,
said pigmented nanoparticles having a size of between 1
nanometer and less than 100 nanometers; and
a Scratch-Off-Coating (SOC) layer applied over said
indicia to maintain said indicia unreadable until removal of said
SOC, wherein said SOC layer comprises at least one opacity ink
film, said at least one opacity ink film comprising a nanoparticle-
sized pigment film having pigmented nanoparticles with a size
of between 1 nanometer and less than 100 nanometers.
2
Appeal2018-004728
Application 13/092,263
THE EVIDENCE
The Examiner relies upon the following as evidence of unpatentability:
Carides
Yamashita
Commander
Kozdras
us 5,769,458
US 2007/0197684 Al
US 2009/0108578 Al
US 2010/0218693 Al
THE REJECTIONS
The Examiner rejects the claims as follows:
June 23, 1998
Aug.23,2007
Apr. 30, 2009
Sept. 2, 2010
(1) claims 1, 5-7, 9, 11-16, 18-24, and 26-28 under 35 U.S.C. § I03(a) as
being unpatentable over Kozdras and Yamashita;
(2) claims 17 and 25 under 35 U.S.C. § I03(a) as being unpatentable over
Kozdras, Yamashita, and Carides; and
(3) claims 29, 30, 32, 34--36, 39 and 40 under 35 U.S.C. § I03(a) as being
unpatentable over Kozdras, Yamashita, and Commander.
ANALYSIS
Rejection 1- Claims 1, 5-7, 9, 11-16, 18-24, and 26--28 over Kozdras and
Yamashita.
Claims 1 and 16
Appellant argues claims 1 and 16 together. App. Br. 7. We select claim 1 as
representative. See 37 C.F.R. § 4I.37(c)(l)(iv).
Claim 1 recites: "indicia provided directly on said bare, white substrate,
said indicia comprising pigmented nanoparticles in process color applied directly
to said white substrate without an intervening layer in a printing process to form
pigmented-particle indicia." (Emphases added). Appellant disputes that Kozdras
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Application 13/092,263
teaches these limitations because Kozdras discloses base layer 160 between its
substrate and indicia. See App. Br. 9- 12; Reply Br. 7-11.
Kozdras's Figure 4 is reproduced below.
2so--
2
230----=
/
/
22er,--~,.......---
160
FIG. 4
Kozdras' s Figure 4 "shows the print layers of an exemplary instant lottery ticket
10." Kozdras ,r 33; see also id. ,r 19. Substrate 150 is composed, for example, of
paper or cardstock and includes secure area 30. Id. ,r 33. Secure area 30 includes
variable game data 170 and non-graphic overprint 180, which is made of scratch-
off layers 220, 230, 240, and 250. Id. Kozdras states: "The secure area 30 is
preferably prepared with a base layer 160." Id. (emphasis added); see also id. ,r 35
("With reference to FIG. 4, the ticket 10 preferably has a base layer 160 covering
the substrate 150 at least in the secure area 30 of the ticket 10.").
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Based on this statement, the rejection finds that Kozdras discloses base layer
160 as optional. Final Act. 3. The Answer states, "'preferably' infers that the
secure area 30 may not have a base layer 160, and thus the indicia is directly on the
bare white substance." Ans. 3.
Appellant disagrees and argues that base layer 160 is not optional because
otherwise lottery ticket 10 would not have a secure area 30. Reply Br. 8 ("that
though the base layer 160 may be an example of preferred method, the language
does not mean that the secure area 30 is optional"); see also App. Br. 10-11.
We agree with the Examiner. As the Examiner found, Kozdras states that
secure area 30 preferably has base layer 160. Kozdras ,r,r 33, 35. This teaches a
preferred embodiment (i.e., one with base layer 160) and implies an un-preferred
embodiment (i.e., one without base layer 160). See, e.g., Callaway Golf Co. v.
Acushnet Co., 576 F.3d 1331, 1346-47 (Fed. Cir. 2009) (holding that despite
stating that the outer layers of a golf ball were "preferably" made of ionomer
resins, the patent also disclosed the use of other materials such as polyurethane);
Halliburton Energy Servs., Inc. v. M-I LLC, 514 F.3d 1244, 1251 (Fed. Cir. 2008)
("[T]he specification states that 'preferably' none of these clays are added; this
strongly suggests that absence of clays is simply a preferred embodiment.");
Cordis Corp. v. Medtronic AVE, Inc., 339 F.3d 1352-57 (Fed. Cir. 2003) ("[U]se
of the term 'preferably' makes clear that the language describes a preferred
embodiment, not the invention as a whole."). Further, we note that claims of
Kozdras recite an instant lottery ticket that does not require base layer 160. For
example, claim 25 recites "a) a substrate having a secure area; b) variable game
data printed in the secure area." Kozdras, claim 25; see also id. claims 24 and 27.
Kozdras, thus, claims an embodiment without base layer 160.
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Appellant also argues that Kozdras's secure area 30 would not exist at all if
it was not different from the substrate itself by having base layer 160. See Reply
Br. 9-10. Appellant contends "[t]he issue is that the secure area 30 (i.e. an
enhance security area) exists at all and is therefore different than the substrate 150
itself. [Otherwise], the lottery tickets of Kozdras would be ineffective and insecure
as the ink-jet indicia could be easily wicked through the base paper." Id. at 10.
Appellant implies that a secure area must have something that enhances security,
for example something that prevents the indicia from being easily wicked through
the base paper. App. Br. 10-11; Reply Br. 9-10.
Appellant's argument is unpersuasive because it is not consistent with the
explicit text of Kozdras. As the Answer points out, Kozdras uses the term "secure
area" to denote the area of the substrate underneath layers 180, the scratch of
coating. Ans. 3; Kozdras ,r 2 ("Instant lottery tickets are typically comprised of a
substrate having a secure area and a graphic area, with variable game data printed
in the secure area and hidden by one or more opaque scratch-off layers printed
there over."), ,r 33.
Appellant further argues that the rejection relies upon improper hindsight
because "the Examiner's only incentive or motivation for so modifying Kozdras
and Yamashita in the manner suggested in the Final Office Action result from
using Appellant[' s] own disclosure as a blueprint to reconstruct the claimed
invention out of isolated teachings in the prior art." App. Br. 12; see also id. at 12-
14; Reply Br. 12-13.
Appellant's argument is unpersuasive as the rejection specifically relies
upon the teachings of both Kozdras and Yamashita to provide the required
rationale. See Final Act. 3; Ans. 3--4. Kozdras states: "The most widely accepted
method for printing the variable game data is water-based inkjet, however solvent-
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based inkjets, toner-based imagers or any other suitable printing technology may
also be used for this purpose." Kozdras ,r 3 6. "Yamashita gives explicit teaching
for nano-sized particles ... such as: improved masking property, storage ability,
and less closing of inkjet nozzles (relevant since Kozdras discloses printed by ink
jet)." Ans. 4; see e.g., Yamashita ,r,r 5, 17.
Appellant additionally argues that the rejection improperly applied a
product-by-process analysis. See e.g., App. Br. 11-12. According to Appellant,
the limitation is "a structural limitation defining that the indicia contain process
color pigmented nanoparticles directly atop a bare, white substrate." Id. at 12.
Appellant's argument is moot. As discussed above, we determine that Kozdras
discloses printing indicia directly atop a bare substrate.
For the reasons above, the rejection of claims 1 and 16 under 35 U.S.C.
§ 103 (a) over Kozdras and Yamashita is sustained.
Claims 5-7, 9, 11, 12, 15, 18-24, and 26--28
Appellant does not present separate arguments for dependent claims 5-7, 9,
11, 12, 15, 18-24, and 26-28. Therefore, these claims stand with claims 1 and 16,
from which they directly or indirectly depend. See 37 C.F.R. § 4I.37(c)(l)(iv).
The rejection of claims 5-7, 9, 11, 12, 15, 18-24, and 26-28 under 35 U.S.C. §
103(a) over Kozdras and Yamashita is therefore sustained.
Claims 13 and 14
Claim 13 depends directly from claim 12, which in tum depends directly
from claim 1. Claim 13 additionally recites:
a background surrounding said pigmented-particle indicia that is also
covered by said SOC layer, the background varying between at least
one of color or pattern throughout said SOC layer area to form a varying
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background, wherein said background and said pigmented-particle
indicia are printed simultaneously under computer control.
Appellant argues that the combination of Kozdras and Yamashita fails to teach
these additional limitations. App. Br. 20-22; Reply Br. 13-15.
We agree with the Appellant. The rejection states: "In respect to claims 13-
14, Kozdras further discloses that base layer (substrate) 160 may further comprise
graphic images (varying color pattern) (00035)." Final Act. 5. Paragraph 35 of
Kozdras discloses that base layer 160 may also include graphic images in graphic
area 40. Kozdras ,r 35. The rejection of claim 1, from which claim 13 depends,
relies upon an embodiment not having base layer 160, and the rejection provides
no sufficient explanation as to how a discussion concerning base layer 160 relates
to an embodiment not having base layer 160. In any event, Kozdras's paragraph
35 is silent as to the background varying between at least one of color or pattern
throughout said SOC layer area to form a varying background and, thus, does not
teach all of the additional limitations of claim 13.
Apparently recognizing the error in the rejection, the Answer states:
"Kozdras discloses printing at 600 dpi ( over 500 dpi) and backgrounds on lottery
tickets are basically inherent. Regardless, printing the background with the same
ink and resolution is obvious, because it is within the ordinary skill in the art."
Ans. 4. First, "[i]nherency ... may not be established by probabilities or
possibilities. The mere fact that a certain thing may result from a given set of
circumstances is not sufficient." Continental Can Co. USA, v. Monsanto Co., 948
F.2d 1264---69 (Fed. Cir. 1991) (quoting In re Oelrich, 666 F.2d 578,581 (CCPA
1981 )). The Answer does not provide sufficient explanation or reasoning that
makes "clear that the missing descriptive matter is necessarily present in the thing
described in the reference, and that it would be so recognized by persons of
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ordinary skill." Continental Can, 948 F.2d at 1268. The Answer simply asserts
that the claim limitation is "basically inherent."
Second, "rejections on obviousness grounds cannot be sustained by mere
conclusory statements; instead, there must be some articulated reasoning with
some rational underpinning to support the legal conclusion of obviousness." In re
Kahn, 441 F.3d 977, 988 (Fed. Cir. 2006) (citing In re Lee, 277 F.3d 1338, 1343-
46 (Fed. Cir. 2002); In re Rouffet, 149 F.3d 1350, 1355-59 (Fed. Cir. 1998)). The
Answer articulates no sufficient rationale to support the assertion that printing the
background with the same ink and resolution would have been obvious. Nor does
it explain how this would render obvious a background varying between at least
one of color or pattern throughout said SOC layer area to form a varying
background.
For these reasons, we determine that the rejection erred in determining that
the combination of Kozdras and Yamashita would have resulted in the additional
limitations of claim 13 and therefore do not sustain the rejection of claim 13.
Claim 14 depends from claim 13 and, thus, we do not sustain the rejection of
claim 14. See In re Fritch, 972 F.2d 1260, 1266 (Fed. Cir. 1992) ("[D]ependent
claims are nonobvious if the independent claims from which they depend are
nonobvious.").
Rejection II- Claims 17 and 25 over Kozdras, Yamashita, and Carides
Claims 17 and 25 depend from independent claim 16. Appellant does not
present separate arguments for dependent claims 17 and 25. For the same reasons
discussed above with respect to independent claim 16, the rejection of claims 17
and 25 under 35 U.S.C. § 103(a) over Kozdras, Yamashita, and Carides is
sustained.
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Rejection III- Claims 29-37, 39, and 40 over Kozdras, Yamashita, and
Commander
Claim 29
Appellant argues that independent claim 29 is unobvious over Kozdras,
Yamashita, and Commander for substantially the same reasons argued with respect
to claims 1 and 16. See App. Br. 14--20 (substantially repeating the argument
made with respect to claims 1 and 16). For the same reasons discussed above with
respect to claims 1 and 16, we sustain the rejection of claim 29 under 35 U.S.C.
§ 103(a) over Kozdras, Yamashita, and Commander.
Claims 30, 32, 34-36, 39, and 40
Appellant does not present separate arguments for dependent claims 30, 32,
34--36, 39, and 40. Therefore, these claims stand with claim 29, from which they
directly or indirectly depend. See 37 C.F.R. § 4I.37(c)(l)(iv). The rejection of
claims 30, 32, 34--36, 39, and 40 under 35 U.S.C. § 103(a) over Kozdras,
Yamashita, and Commander is sustained.
DECISION
The Examiner's decision to reject claims 1, 5-7, 9, 11, 12, 15-30, 32, 34--36,
39, and 40 is affirmed and to reject claims 13 and 14 is reversed.
No time period for taking any subsequent action in connection with this
appeal may be extended under 37 C.F.R. § 1.136(a). 37 C.F.R. § 1.136(a)(l )(iv).
AFFIRMED-IN-PART
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