Ex Parte Chatow et alDownload PDFPatent Trial and Appeal BoardJan 31, 201711799444 (P.T.A.B. Jan. 31, 2017) Copy Citation 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. 11/799,444 04/30/2007 Ehud Chatow 82229444 6078 22879 HP Tnr 7590 02/02/2017 EXAMINER 3390 E. Harmony Road Mail Stop 35 GRABOWSKI, KYLE ROBERT FORT COLLINS, CO 80528-9544 ART UNIT PAPER NUMBER 3725 NOTIFICATION DATE DELIVERY MODE 02/02/2017 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): ipa.mail@hp.com barbl@hp.com y vonne.bailey @ hp. com PTOL-90A (Rev. 04/07) UNITED STATES PATENT AND TRADEMARK OFFICE BEFORE THE PATENT TRIAL AND APPEAL BOARD Ex parte EHUD CHATOW, GALIA GOLODETZ, STEVEN J. SIMSKE, and GAL VICTOR Appeal 2014-007654 Application 11/799,4441 Technology Center 3700 Before CHARLES N. GREENHUT, PATRICK R. SCANLON, and BART A. GERSTENBLITH, Administrative Patent Judges. SCANLON, Administrative Patent Judge. DECISION ON APPEAL STATEMENT OF THE CASE Appellants seek our review under 35 U.S.C. § 134 of the Examiner’ decision rejecting claims 1—20, which are all of the pending claims. We have jurisdiction under 35 U.S.C. § 6(b). 1 According to Appellants, the real party in interest is Hewlett-Packard Development Company, LP, a wholly-owned affiliate of Hewlett-Packard Company. Appeal Br. 1. Appeal 2014-007654 Application 11/799,444 We AFFIRM-IN-PART and designate our affirmance as NEW GROUNDS OF REJECTION pursuant to our authority under 37 C.F.R. § 41.50(b). CLAIMED SUBJECT MATTER The claims are directed to “a covert label. . . whose complete information is not revealed until the label is activated.” Spec. 3,11. 22—23. Claims 1, 9, and 18 are the independent claims on appeal. Claims 1 and 18 are illustrative of the claimed subject matter and are reproduced below. 1. A covert label comprising: a substrate comprising a field of ink; ink disposed within said field of ink, wherein said ink is operable to preferential removal according to a preconfigured pattern, wherein said preconfigured pattern is unrevealed, comprises an incentive and comprises information associable with at least one object; and an ink removal mechanism disposed over said field of ink and comprising an adhesive surface coupled with said ink, wherein activation of said ink removal mechanism reveals said preconfigured pattern such that said preconfigured pattern is unrevealed until activation of said ink removal mechanism, wherein said activation allows said at least one object to be operable. 18. A method of implementing a covert label for tracking a preconfigured pattern to a database comprises: coupling said covert label to an object that is an end-user product, said covert label comprising said preconfigured pattern, wherein said preconfigured pattern is unrevealed; 2 Appeal 2014-007654 Application 11/799,444 coupling a revealing mechanism which is operable to irreversibly reveal said preconfigured pattern by removing ink based on said preconfigured pattern that comprises an incentive; and presenting said incentive to activate said revealing mechanism and for reporting information comprised within said preconfigured pattern to said database once said preconfigured pattern is revealed. Appeal Br. 12, Claims App. REFERENCES The Examiner relies upon the following prior art references: Adamoli Smits Hoffer Fiala US 4,718,553 US 4,837,061 US 5,633,058 US 2003/0004889 A1 Jan. 12, 1988 June 6, 1989 May 27, 1997 Jan. 2, 2003 REJECTIONS The following rejections are before us on appeal: I. Claims 1—16 stand rejected under 35 U.S.C. § 102(b) as being anticipated by Hoffer. II. Claims 9 and 17 stand rejected under 35 U.S.C. § 102(b) as being anticipated by Adamoli. III. Claims 18—20 stand rejected under 35 U.S.C. § 103(a) as unpatentable over Fiala and Smits. ANALYSIS Rejection I Hoffer discloses “a composite tape adapted to be secured to an object and, when removed from that object, to provide a visible indication 3 Appeal 2014-007654 Application 11/799,444 (‘message’) on the object which was not theretofore visible.” Hoffer, 1:5—8. For example, composite tape 2 is wrapped around an object such as carton 4 so as to retain carton flaps 6 and 8 in a closed position. Id. at 4:12—20, Fig. 1. As shown in Figure 4, the composite tape comprises transparent backing sheet 12, patterned layer 14 of release material, print layer 16, adhesive layer 18, and second release layer 20. Id. at 4:30-5:3, Fig. 4. Patterned layer 14 is not visible while tape 2 is secured to carton 4. Id. at 5:10—13, Fig. 1. But when tape 2 is removed from carton 4, the portion of print layer 16 separated from backing sheet 12 by patterned layer 14 will remain in place, thereby “exhibiting the message of the pattern” such as the word “void.” Id. at 5:16—24, Fig. 3. The Examiner finds that Hoffer discloses a covert label comprising: a substrate (object) 6 comprising a field of ink 16 (Fig. 3), wherein said ink is operable to preferential removal according to a preconfigured pattern 14 (Abstract, Fig. 5) distinct to the object as it is directly applied to that object; an ink removal mechanism 12 is disposed over and has an adhesive surface in contact with the portions of the field of ink 16 thus to irreversibly reveal the preconfigured pattern upon activation (peeling) of the ink removal mechanism 12. Final Act. 2. Regarding the claim 1 limitation that the preconfigured pattern comprises an incentive, the Examiner finds that one of the revealed patterns or messages disclosed by Hoffer—“For Export Only”—is an incentive not to return the object which has been marked. Id. Regarding the claim 1 limitation “wherein said activation allows said at least one object to be operable,” the Examiner states merely that this limitation “does not limit the structure of the covert label being claimed.” Id. at 3. It is not clear, however, how this statement—even if accurate— establishes that Hoffer discloses the claim limitation. If the Examiner’s 4 Appeal 2014-007654 Application 11/799,444 position is that this claim limitation is not entitled to patentable weight because it allegedly does not limit the label structure, such position is not clearly made nor adequately supported. The Examiner also determines that the difference between printed matter “wherein said activation [revealing] allows said at least one object to be operable” and any other printed matter (e.g. For Export Only) is the particular content of the printed matter. This difference is a non-patentable distinction since the printed matter is not functionally related to the substrate (but rather intended use of the content of the printed matter after activation). Id. at 7; see also Ans. 2 (arguing that the making operable limitation is drawn to an intended use of the object). We do not agree with this determination, however, because the claim limitation relates to the activation of the ink removal mechanism and does not involve printed matter. We note, however, that Hoffer discloses that “to gain access to the interior of the carton 4 , one must remove the tape 2 from over the line 10 so that the flaps 6 and 8 can be opened to expose the carton contents.” Hoffer, 4:22—26. When flaps 6 and 8 are opened, the contents of carton 4 can be removed. Accordingly, removing tape 2 renders carton 4 operable in the sense that flaps 6 and 8 can be freely opened and closed. As such, Hoffer discloses that removing tape 2 (i.e., activating the ink removal mechanism), allows carton 4 to be operable. Appellants argue that Hoffer is “directed toward tamper notification indicating that an object has been tampered with.” Appeal Br. 4 (citing Hoffer, Abstract). According to Appellants, such a tamper notification is a disincentive for making an object operable and, therefore, does not teach the claim 1 limitation of activation allowing an object to be operable. Id. at 4—5. 5 Appeal 2014-007654 Application 11/799,444 This argument is not persuasive. First, we disagree that Hoffer’s tamper notification function is a disincentive to open carton 4 (i.e., make the carton operable). At best, this function would be a disincentive to unauthorized opening of the carton, but there would be no disincentive for the intended recipient to open the carton.2 That is, the intended recipient of the carton would be incentivized to open the carton to access the carton’s contents, despite the tamper notification. Second, claim 1 does not recite an incentive to make an object operable. Rather, claim 1 merely recites that activation of the ink removal mechanism “allows said at least one object to be operable.” Hoffer discloses this limitation because, as discussed above, removal of Hoffer’s tape 2, which entails activating the ink removal mechanism (transparent backing sheet 12), allows carton 4 to be operable. Appellants also argue that the phrases “For Export Only” and “void,” examples of messages revealed by the label of Hoffer, “would be the same for all objects and therefore could not anticipate ‘an incentive and information that is distinct to said object,’ as recited by independent Claim 9.”3 Reply Br. 2. We disagree. The phrase “For Export Only,” as used in Hoffer’s label, is distinct to the carton the label is applied to because it identifies that particular carton as being wrongfully returned. Hoffer, 3:44—51. Similarly, the term “void,” as used in Hoffer’s label, is distinct to 2 We are not convinced that Hoffer’s invention necessarily creates a disincentive to unauthorized opening of the carton because, in many instances, a person improperly opening the carton would not know about the tamper notification function until after the tape is removed. 3 This argument is Appellants’ only argument that is directed specifically to independent claim 9. Otherwise, Appellants argue independent claims 1 and 9 together. Appeal Br. 5. 6 Appeal 2014-007654 Application 11/799,444 the carton the label is applied to because it indicates that that particular carton has been tampered with. Id. at 1:43—45, 2:29-30, 4:36—38. In view of the above, Appellants’ arguments do not apprise us of error, and we sustain the rejection of independent claims 1 and 9. Appellants rely on the same arguments made in connection with claims 1 and 9 in asserting the patentability of dependent claims 2—8 and 10—16. Appeal Br. 5. As such, claims 2—8 and 10-16 fall with claims 1 and 9. See 37 C.F.R. § 41.37(c)(l)(iv) (2015). Because our reasoning differs from that of the Examiner, however, we designate our affirmance of the rejection of claims 1—16 as a “new ground” so as to afford Appellants a fair opportunity to respond. In re Leithem, 661 F.3d 1316, 1320 (Fed. Cir. 2011). Rejection II The Examiner finds that Adamoli discloses applying field of ink 40 to substrate 10, patterning preconfigured pattern 42 on the ink, and coupling revealing mechanism 50, operable to reveal the preconfigured pattern. Final Act. 4. The Examiner also finds that preconfigured pattern 42 invisibly identifies an object and is unrevealed until removal of the revealing mechanism. Id. Regarding the claim 9 limitation that the preconfigured pattern comprises an incentive, the Examiner finds that one of the revealed patterns or messages disclosed by Adamoli—“UNSAFE”—is an incentive to treat the object with caution. Id. Regarding the claim 9 limitation “wherein said activation allows said at least one object to be operable such that without activation said object is not operable,” the Examiner determines merely that this limitation “does not limit the structure of the covert label being claimed.” Id. at 5. The Examiner also determines that this claim limitation is not patentably distinct 7 Appeal 2014-007654 Application 11/799,444 because it is drawn to printed matter that is not functionally related to the substrate and an intended use of the object. Id. at 7; Ans. 2. These determinations are essentially the same positions the Examiner took in connection with the rejection based on Hoffer. We find these determinations erroneous for the same reasons discussed above. We note, however, that Adamoli discloses that once carton blank 10 is folded into a rectangular shape, the product is inserted through the open top of the erected carton, and then top tabs 28 are folded down and secured in place by top flaps 20. Adamoli, 7:40-45. The closed carton is then overwrapped with transparent film 50. Id. at 7:48—50. As seen in Figure 6, transparent film 50 covers the entire carton. Id. at Fig. 6; see also id. at 8:65—66 (“transparent overwrap 50 overwrapping all”). With this arrangement, when film 50 overwraps the carton, the carton is not operable in the sense that it cannot be opened to remove the product. But when film 50 is removed (i.e., activating the revealing mechanism), the carton becomes operable in the sense that it can be opened to remove the product. Accordingly, Adamoli discloses the claim 9 limitation “wherein said activation allows said at least one object to be operable such that without activation said object is not operable.” Appellants make an argument similar to the argument asserted against the rejection based on Hoffer. That is, Appellants argue that Adamoli also is “directed toward tamper notification indicating that an object has been tampered with.” Appeal Br. 6 (citing Adamoli, Abstract, 3:45—49). According to Appellants, such a tamper notification is a disincentive for making an object operable and, therefore, does not teach the claim 9 limitation of activation allowing an object to be operable. Id. 8 Appeal 2014-007654 Application 11/799,444 We find this argument unpersuasive for reasons similar to those discussed above in connection with Hoffer. Namely, we disagree that Adamoli’s tamper notification function is a disincentive to open the carton and make it operable. As with the Hoffer package, the intended recipient of Adamoli’s carton would be incentivized to open the carton to access the product therein, despite the tamper notification. Furthermore, claim 9 does not recite an incentive to make an object operable. Rather, claim 9 merely recites that activation of the revealing mechanism “allows said at least one object to be operable such that without activation said object is not operable.” Adamoli discloses this limitation because, as discussed above, removing Adamoli’s transparent film 50 (i.e., activating the revealing mechanism) allows the carton to be operable, but the carton is not operable, at least in this sense, without removal of transparent film 50. In view of the above, Appellants’ arguments do not apprise us of error, and we sustain the rejection of claim 9 as anticipated by Adamoli. We also sustain the rejection of claim 17, which depends from claim 9 and for which Appellants do not advance any separate argument. See Appeal Br. 7. Because our reasoning differs from that of the Examiner, however, we designate our affirmance of the rejection of claims 9 and 17 as a “new ground” so as to afford Appellants a fair opportunity to respond. Leithem, 661 F.3d at 1320. Rejection III The Examiner finds that Fiala discloses “providing a covert label having a preconfigured pattern (PIN number) 1.32 applied to an object (activation card) 1.78 and coupling a revealing mechanism 1.82 (Fig. 13).” Final Act. 5. The Examiner also finds that Fiala does not disclose 9 Appeal 2014-007654 Application 11/799,444 irreversibly revealing the preconfigured pattern by removing ink based on the preconfigured pattern. Id. at 6. Instead, the Examiner finds that Smits discloses a similar invention comprising coupling a covert label to an object 41 and a revealing mechanism 44 (Fig. 3), wherein an ink layer (thin film) 42 is treated with an adhesion-reducing agent coated in a preconfigured pattern, wherein upon delamination, a preconfigured pattern is irreversibly revealed (the ink layer is removed in areas outside the adhesion-reducing agent by the revealing mechanism) (Col. 8, 3—12)[,] and concludes that it would have been obvious to one of ordinary skill in the art to substitute Fiala’s simple peel-off label with the mechanism taught by Smits. Id. The Examiner’s position, however, is based on the erroneous finding that thin film 42 of Smits is an “ink layer.” Smits discloses a laminated tamper-evident structure having “at least two layers capable of generating a color by a light interference and absorption phenomenon” wherein the generated color is irreversibly lost when the layers are peeled apart. Smits, Abstract. In the embodiment relied on by the Examiner, the tamper-evident structure comprises flat substrate 41, metal layer 40, thin film 42 of a light transmitting material, and overlying strip 44. Id. at 11:12—19, Fig. 3. The color generated by this structure is eliminated when layers 40 and 42 are completely separated. Id. at 11:38—39. To support the finding that thin film 42 is an “ink layer,” the Examiner states that Smits discloses that “a wide variety of materials may be used” in forming the thin layer, “which allows characterization of the formed film as an ink.” Final Act. 6 (citing Smits, 5:61—6:14). The passage of Smits cited by the Examiner, however, states that “[t]he material used to 10 Appeal 2014-007654 Application 11/799,444 form the thin film overlying the metal layer can be any light transmitting layer having adequate transparency’'' and does not state expressly using ink. Smits, 5:61—6:14 (emphasis added). Thus, the Examiner has not explained sufficiently how Smits explicitly or implicitly discloses using ink in the thin film. The mere fact that a variety of materials are disclosed does not mean that ink was contemplated by Smits. Indeed, Smits’ disclosure of the thin film being a light transmitting material having adequate transparency tends to suggest that ink would not be contemplated for this film. For the above reason, we do not sustain the rejection of claim 18, and claims 19 and 20 depending therefrom, as unpatentable over Fiala and Smits DECISION We affirm the decision of the Examiner rejecting claims 1—17 and designate our affirmance as NEW GROUNDS OF REJECTION. We reverse the decision of the Examiner rejecting claims 18—20. This decision contains new grounds of rejection pursuant to 37 C.F.R. § 41.50(b) (2011). 37 C.F.R. § 41.50(b) provides “[a] new ground of rejection pursuant to this paragraph shall not be considered final for judicial review.” 37 C.F.R. § 41.50(b) also provides that Appellants, WITHIN TWO MONTHS FROM THE DATE OF THE DECISION, must exercise one of the following two options with respect to the new grounds of rejection to avoid termination of the appeal as to the rejected claims: (1) Reopen prosecution. Submit an appropriate amendment of the claims so rejected or new evidence relating to the claims so rejected, or both, and have the matter reconsidered by the Examiner, in which event the proceeding will be remanded to the Examiner. . . . 11 Appeal 2014-007654 Application 11/799,444 (2) Request rehearing. Request that the proceeding be reheard under §41.52 by the Board upon the same record. .. . 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)(l)(iv). AFFIRMED-IN-PART, 37 C.F.R. § 41.50(b) 12 Copy with citationCopy as parenthetical citation