Ex Parte Bianco

Board of Patent Appeals and Interferences

Sep 24, 2002

09032928 (B.P.A.I. Sep. 24, 2002)

The opinion in support of the decision being entered today was not written for
publication and is not binding precedent of the Board.
Paper No. 10
UNITED STATES PATENT AND TRADEMARK OFFICE
____________
BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
____________
Ex parte JAMES S. BIANCO
____________
Appeal No. 2000-1959
Application No. 09/032,928
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ON BRIEF
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Before LALL, DIXON, and GROSS, Administrative Patent Judges.
DIXON, Administrative Patent Judge.
DECISION ON APPEAL
This is a decision on appeal from the examiner's final rejection of claims 1-3,
which are all of the claims pending in this application.
We REVERSE.
Appeal No. 2000-1959
Application No. 09/032,928
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BACKGROUND
Appellant's invention relates to a compound secure optical identification method
and means. The method uses a first coded original article that can be modified and
customized by a user by obliterating specific diffraction grating elements. An
understanding of the invention can be derived from a reading of exemplary claim 1,
which is reproduced below.
1. A method of providing secure identification for an article,
comprising:
(a) providing on said article a diffraction grating strip comprising
a pattern of a series of diffraction grating elements, each
said diffraction grating element to diffract light, from a light
source, in one of at least first, second, third, and fourth
selected different planes, each of said diffraction grating
elements which diffract light in said first, second, or third
planes being separated from another diffraction grating
element which diffracts light in said first, second, or third
planes by a diffraction grating element which diffracts light in
said fourth plane; and
(b) selectively obliterating selected ones of said diffraction
grating element which diffract light in said fourth plane, such
as to form a binary number consisting of obliterated and
nonobliterated ones of said diffraction grating elements
which diffract light in said fourth plane.
The prior art references of record relied upon by the examiner in rejecting the
appealed claims are:
Horst et al. (Horst) 4,034,211 Jul. 05, 1977
Stanisci 5,331,443 Jul. 19, 1994
Appeal No. 2000-1959
Application No. 09/032,928
3
Claims 1-3 stand rejected under 35 U.S.C. § 103 as being unpatentable over
Horst in view of Stanisci.
Rather than reiterate the conflicting viewpoints advanced by the examiner and
appellant regarding the above-noted rejections, we make reference to the examiner's
answer (Paper No. 9, mailed Apr. 24, 2000) for the examiner's reasoning in support of
the rejections, and to the appellant's brief (Paper No. 8, filed Feb. 23, 2000) for
appellant's arguments thereagainst.
OPINION
In reaching our decision in this appeal, we have given careful consideration to
appellant's specification and claims, to the applied prior art references, and to the
respective positions articulated by appellant and the examiner. As a consequence of
our review, we make the determinations which follow.
The examiner maintains that Horst teaches the use of diffraction gratings for
plural planes for the coding of information in addition to the use of diffraction gratings
for control and separation functions. (See answer at pages 3-5.) We agree with the
examiner. The examiner maintains that Stanisci teaches the obliteration of material to
increase the authentication and security in the formation of a hologram. (See answer at
page 4.) We agree with the examiner, but we fail to understand why it would have been
obvious to one of ordinary skill in the art at the time of the invention to look to the
methodology of formation of a hologram with an already formed security code. The
Appeal No. 2000-1959
Application No. 09/032,928
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examiner maintains that it would have been obvious to one of ordinary skill in the art at
the time of the invention to selectively obliterate the spacers 30 and 32 between the
coded data elements and this would not affect the particular code. (See answer at
pages 4-5.) We disagree with the examiner. From our review of Horst, Horst clearly
teaches, at column 9, lines 21-26, that "[a]lso, the particular photodetector like 118,
120 which senses the space gratings 30 (FIG. 3) must be energized between
successive data diffraction gratings like 26, 28 as this provides a separation between
the characters being read." From our reading of this teaching, Horst implies that all the
spacer gratings are required between the codes/characters being read.
Appellant argues that there is nothing in either reference that teaches obliterating
existing diffraction gratings. (See brief at pages 4-5.) We agree with appellant.
Appellant describes Horst as teaching that the "S" or spacer diffraction grating forms
an "optical clock." (See brief at page 4.) The examiner maintains that no mention or
reference to an "optical clock" can be found in the teachings of Horst and the
obliteration of some of the "S" grating would not destroy any feature of the "S" grating
as a clock since the obliterated grating would still be positioned at the same locations
and thus could still fulfill the same purpose of timing. (See answer at pages 6-7.) We
do not agree with the examiner's conclusory finding. The examiner has not considered
that the void could not be detected in the same manner as the diffraction grating as
disclosed by Horst. If the void could still be detected by Horst then why include this
Appeal No. 2000-1959
Application No. 09/032,928
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specific diffraction grating in the original coding? We agree with appellant's argument
that the examiner's combination and modification of the teachings of Horst is based
upon improper hindsight reconstruction of appellant's claimed invention, and we will not
sustain the rejection of independent claims 1 and 3 and dependent claim 2.
CONCLUSION
To summarize, the decision of the examiner to reject claims 1-3 under 35 U.S.C.
§ 103 is reversed.
REVERSED
PARSHOTAM S. LALL )
Administrative Patent Judge )
)
)
)
) BOARD OF PATENT
JOSEPH L. DIXON ) APPEALS
Administrative Patent Judge ) AND
) INTERFERENCES
)
)
)
ANITA PELLMAN GROSS )
Administrative Patent Judge )
JD/RWK
Appeal No. 2000-1959
Application No. 09/032,928
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JOHN H. CROZIER
1934 HUNTINGTON TURNPIKE
TRUMBULL, CT 06611