Ex Parte Bray

Patent Trial and Appeal Board

May 3, 2017

12865353 (P.T.A.B. May. 3, 2017)

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.
12/865,353 11/12/2010 David Bray 006422-00056 2216
28827 7590 05/05/2017
GABLE & GOTWALS
100 WEST FIFTH STREET, 10TH FLOOR
TULSA, OK 74103
EXAMINER
POWERS, LAURA C
ART UNIT PAPER NUMBER
1785
NOTIFICATION DATE DELIVERY MODE
05/05/2017 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):
iplaw@gablelaw.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte DAVID BRAY
Appeal 2016-002693
Application 12/865,353
Technology Center 1700
Before MARK NAGUMO, JULIA HEANEY, and LILAN REN,
Administrative Patent Judges.
HEANEY, Administrative Patent Judge.
DECISION ON APPEAL
Appellant1 requests review pursuant to 35 U.S.C. § 134(a) from a
decision of the Examiner rejecting claims 2—23 and 25—28 of Application
12/865,353.2 We have jurisdiction under 35 U.S.C. § 6(b).
We affirm.
1 Appellant identifies the real party in interest as De La Rue International
Limited. App. Br. 2.
2 Non-Final Rejection dated Jan. 30, 2015 (“Non-Final Act.”) 3—11. This
Decision also refers to the Examiner’s Answer dated Oct. 23, 2015 (“Ans.”),
and the Reply Brief dated Dec. 23, 2015 (“Reply Br.”).
Appeal 2016-002693
Application 12/865,353
BACKGROUND
The subject matter on appeal relates to a security document
comprising an unprinted region and a region printed with a security feature
having a tactile feel. App. Br. 2. The security feature comprises a printed
resin layer with a thickness pre-selected to be detectable by touch relative to
the unprinted region, and particles protruding from the printed resin layer at
a density of at least 3 particles per square millimeter, which create a rough
abrasive texture of variable height. Id. at 2—3.
Claim 21, reproduced below, is illustrative of the subject matter on
appeal:
21. A security document, said document comprising:
at least one unprinted region;
at least one printed region printed with a security feature
having a tactile feel, the security feature comprising a printed
resin layer with a thickness pre-selected to be detectable by
touch relative to the at least one unprinted region, the thickness
being greater than 10 microns with particles protruding at least
10 pm therefrom in an amount of at least 3 particles per mm2 of
said layer;
a change of height between the at least one printed resin
layer and the unprinted region forming one tactile
characteristic; and
a rough abrasive texture of variable height created by the
protruding particles on the printed resin layer forming a second
tactile characteristic;
wherein the at least one unprinted region is not printed
with the security feature.
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Appeal 2016-002693
Application 12/865,353
THE REJECTIONS
1. Claims 2—12, 15—23, and 25—28 are rejected under 35 U.S.C.
§ 103(a) as unpatentable over the combination of Vast3 and
Rochford.4 Non-Final Act. 3—10.
2. Claims 13 and 14 are rejected under 35 U.S.C. § 103(a) as
unpatentable over the combination of Vast, Rochford, and
Kadokura.5 Non-Final Act. 10—11.
DISCUSSION
Rejection 1
Appellant argues independent claims 21 and 23 together, and does not
present argument for separate patentability of the dependent claims. App.
Br. 2. Therefore, we focus our discussion on claim 21; all dependent claims
stand or fall with the claim from which they depend. 37 C.F.R.
§ 41.37(c)(l)(iv) (2013).
The Examiner finds that Vast teaches a security document having a
security means comprising a visual interference effect and a tactile
recognition element within a printed region on the surface of the document.
Ans. 2 (citing Vast, Figs. 1—2, || 9—24, 39—50, 58, 69—77). The Examiner
further finds that Vast’s interference element can comprise printed or
photogravure pigments, coatings, ink or multi-layer films, and that in one
embodiment Vast’s tactile recognition element comprises particles having
sizes between 5—100 pm and partially embedded into a layer of iridescent
3 Vast et al., US 2010/0002303 Al; Jan. 7, 2010 (“Vast”).
4 Rochford et al., US 2004/0197524; Oct. 7, 2004 (“Rochford”).
5 Kadokura et al., US 4,584,243; Apr. 22, 1986 (“Kadokura”).
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Appeal 2016-002693
Application 12/865,353
pigments in a resin binder such that the particles form a rough abrasive
texture at the surface. Id. at 3 (citing Vast || 27—36, 39—45, 75). The
Examiner finds that Vast does not explicitly disclose that the thickness of the
resin binder is greater than 10 pm, or that the particle density is at least 3
particles per square millimeter, but reasons that a user would be able to feel
a tactile difference when moving a finger from the unprinted portion of the
document to the printed portion; the Examiner further determines that it
would have been obvious to a person of ordinary skill in the art to adjust the
thickness of the resin binder or to incorporate at least 3 particles per square
millimeter, in order to provide a clear difference between the tactile
recognition area and the unprinted region of the document. Id. at 4—5.
The Examiner also finds that Vast does not expressly state that the
particles protrude at least 10 pm from the surface, or at varying heights. Id.
at 3, 5. The Examiner determines, however, that because of the range of
particle sizes disclosed (i.e. 5—100 pm), it would have been obvious to a
person of ordinary skill in the art that particles would likely protrude from
the surface at varying heights. Id. at 3. The Examiner further relies on
Rochford as disclosing a layer having a textured surface due to incorporation
of particles, with particles protruding between 5—100 pm from the image
layer surface, and further teaching that a height of less than 3 pm does not
provide a tactile feel, while a height greater than 120 pm is not cost-
justified. Id. at 5 (citing Rochford 140).
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Appeal 2016-002693
Application 12/865,353
Appellant argues that Vast does not use a detectable height difference
between a printed and unprinted region as a tactile recognition element.6
App. Br. 9. Thus, Appellant argues, the Examiner arbitrarily uses
Appellant’s teaching to fill in gaps not found in Vast. Id. at 10. Similarly,
Appellant argues that neither Vast nor Rochford use particles protruding at
least 10 pm from the printed layer and at varying heights, and that neither
reference teaches the density of the protruding particles. Id. at 10-13.
Appellant does not dispute the Examiner’s rationale for why a person of
ordinary skill in the art would have modified Vast or combined Rochford’s
teachings with those of Vast, to arrive at the claimed invention.
Appellant’s argument does not persuade us that the Examiner
harmfully erred in finding that Vast’s printed region comprising the
interference effect has a detectable tactile difference from the unprinted
region of Vast. See Ans. 11 (providing citations to Vast). Although Vast
does not explicitly disclose the thickness of its printed region, the thickness
encompassed by claim 21 (i.e., “detectable by touch” and “greater than 10
microns”) is so broad that the ordinary artisan would reasonably have
expected Vast’s printed region to meet those minimal requirements.
6 Appellant also argues in the principal brief that the Examiner erred in
finding that Vast’s interference element lies in an unprinted region. App. Br.
8—9. The Examiner responds by restating the basis of the rejection and
clarifying the finding that Vast’s “security means includes the zone having
an interference effect and the protruding particles, which corresponds to the
claimed printed region.” Ans. 12. Appellant did not respond to this
clarification and accordingly we understand that Appellant no longer pursues
this argument.
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Application 12/865,353
Accordingly, we do not conclude that the Examiner arbitrarily applied
Appellant’s teachings to Vast.
Similarly, with regard to the height and density of the protruding
particles, Appellant’s argument is not persuasive of reversible error. As the
Examiner notes, Vast teaches that its particles are partially embedded, and
the size of the particles is preferably between 5—100 pm. Ans. 14 (citing
Vast || 43, 75). Given that range in particle size, a person of ordinary skill
would have recognized the likelihood that particles would protrude at
variable heights to enhance the tactile feel. Further, Rochford teaches that
depth difference (which corresponds to “protruding” as recited in claim 21)
less than 3 pm does not provide enough difference for tactile detection,
while depth greater than 120 pm is not cost justified because tactile feel does
not significantly improve. Rochford 140. Further, the Examiner’s
determination that it would have been within the ability of a person of
ordinary skill to adjust the density of particles to at least 3 particles per mm2
is reasonable. Finally, Appellant has not directed us to any evidence of
unexpected results. Accordingly, we affirm the rejection.
Rejection 2
Claims 13 and 14 depend from claim 21 and recite the hardness of the
particles on the Mohs hardness scale. App. Br. 16—17 (Claims App’x). The
Examiner finds that Kadokura teaches an abrasive used in a magnetic
recording medium comprising an inorganic powder made of particles having
a Mohs hardness of 5 or above, which is the same as recited in claim 13 and
overlaps the range recited in claim 14. Ans. 10 (providing citations to
Kadokura). Appellant argues that Kadokura is non-analogous art because it
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Application 12/865,353
is not for use in a security document, but rather a magnetic recording
medium. App. Br. 14.
Two separate tests define the scope of analogous prior
art: (1) whether the art is from the same field of endeavor,
regardless of the problem addressed and, (2) if the reference is
not within the field of the inventor’s endeavor, whether the
reference still is reasonably pertinent to the particular problem
with which the inventor is involved.
In re Bigio, 381 F.3d 1320, 1325 (Fed. Cir. 2004) (citations and internal
quotes omitted). “A reference is reasonably pertinent if, even though it may
be in a different field from that of the inventor’s endeavor, it is one which,
because of the matter with which it deals, logically would have commended
itself to an inventor’s attention in considering his problem.” In re Clay, 966
F.2d 656, 659 (Fed. Cir. 1992). The scope of analogous art is to be
construed broadly. Wyers v. Master Lock Co., 616 F.3d 1231, 1238 (Fed.
Cir. 2010) (“The Supreme Court’s decision in KSR International Co. v.
Teleflex, Inc., . . . , directs us to construe the scope of analogous art
broadly”).
Appellant’s argument is not persuasive of reversible error. Appellant
provides no explanation of why a person of ordinary skill in the art would
not have considered Kadokura’s teaching of abrasive, inorganic powder
spherical particles having Mohs hardness of 5 or above as reasonably
pertinent to the problem faced by the inventor of the subject matter on
appeal. Appellant does not respond to the Examiner’s finding that
Kadokura’s abrasive particles are selected from among the same inorganic
particles (i.e., silica, alumina) as those disclosed in Appellant’s
Specification, as well as Vast and Rochford, and that Kadokura also teaches
an article with protruding particles that form an abrasive texture. Ans. 16
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Application 12/865,353
(providing citations to Spec., Vast, and Rochford). Based on Appellant’s
argument and evidence, we discern no error in the Examiner’s reasonable
conclusion that a person of ordinary skill in the art would have recognized
Kadokura’s teaching regarding hardness of protruding particles as pertinent
to the subject matter of claims 13 and 14.
SUMMARY
We affirm the rejections of claims 2—23 and 25—28.
No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. § 1.136(a).
AFFIRMED
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