Ex Parte Chatow et al

Patent Trial and Appeal Board

May 20, 2013

11799444 (P.T.A.B. May. 20, 2013)

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 2011-002953
Application 11/799,444
Technology Center 3700
____________________

Before CHARLES N. GREENHUT, PATRICK R. SCANLON, and
BART A. GERSTENBLITH, Administrative Patent Judges.

SCANLON, Administrative Patent Judge.

DECISION ON APPEAL
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STATEMENT OF THE CASE
Appellants seek our review under 35 U.S.C. § 134 of the Examiner’s
decision rejecting claims 1-20. We have jurisdiction under 35 U.S.C. § 6(b).
We AFFIRM.
THE INVENTION
The claims are directed to “a covert label . . . whose complete
information is not revealed until the label is activated.” Spec. 3, ll. 22-23.
Independent claim 1, reproduced below, is illustrative of the claimed subject
matter:
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
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.
Independent claim 9 is directed to a method of fabricating a covert
label comprising, inter alia, “patterning a preconfigured pattern . . . [which]
is unrevealed and which invisibly identifies an object.” Independent claim
18 is directed to a method of implementing a covert label.
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REFERENCES
The Examiner relies upon the following prior art references:
Adamoli
Hoffer
US 4,718,553
US 5,633,058
Jan. 12, 1988
May 27, 1997
Fiala US 2003/0004889 A1 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. § 102(b) as being
anticipated by Fiala.
ANALYSIS
Rejection I
The Examiner finds that Hoffer discloses a substrate 6 comprising a
field of ink and ink 16 disposed in the field of ink that is operable to
preferential removal according to a preconfigured pattern 14, wherein the
pattern 14 is unrevealed and comprises information associable with an
object. Ans. 3. The Examiner further finds that Hoffer discloses an ink
removal mechanism 12 disposed over the field of ink and comprising an
adhesive surface coupled with the ink 16 such that activation (by peeling) of
the ink removal mechanism 12 reveals the previously unrevealed pattern 14.
Id.
Regarding claim 1, Appellants argue that the flap 6 disclosed by
Hoffer (the structural element that the Examiner purports meets the claimed
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substrate) does not comprise “a field of ink; ink disposed within said field of
ink,” because the “adhesive layer 18 separates Hoffer’s layer of print 16
from Hoffer’s object 6.” App. Br. 9. Appellants also argue that they “do not
understand Hoffer’s adhesive layer 18 to comprise Hoffer’s layer of print 16
in any sense of that the word ‘comprise’ is used. Instead, Appellants
understand an adhesive layer 18 to completely separate Hoffer’s layer of
print 16 from Hoffer’s object 6.” Reply Br. 1.
These arguments are not persuasive. First, the Examiner does not
contend that Hoffer’s adhesive layer 18 is the claimed substrate. Thus,
argument as to whether the adhesive layer 18 “comprises” the field of
ink/layer of print 16 is not relevant. Second, we are not convinced by
Appellants’ arguments that the flap 6 of Hoffer cannot “comprise” the field
of ink/layer of print 16 because the adhesive layer 18 is interposed between
the flap 6 and the layer of print 16. Instead, we agree with the Examiner’s
position that the claim language does not require the substrate and the field
of ink to be in direct relation. Ans. 5.
The words of a claim are generally given their ordinary and customary
meaning, which is the meaning the words would have to a person of
ordinary skill in the relevant art at the time of invention. Phillips v. AWH
Corp., 415 F.3d 1303, 1312-13 (Fed. Cir. 2005) (en banc). During
examination, patent claims are given their broadest reasonable construction
in light of the specification. Id. at 1316. The term “comprising,” a word
frequently used in patent claims, generally means “including” or “being
made up of” and does not preclude the presence of additional, non-recited
elements. Appellants’ Specification sheds little light on how the phrase “a
substrate comprising a field of ink” might be interpreted, but does state
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“[c]overt label 100A comprises substrate 120 which comprises field of ink
130.” Spec., p. 5, ll. 19-20. We also note that Appellants’ Specification
describes an embodiment in which an adhesion layer 335 is applied between
the substrate 120 and the field of ink 310. Spec., p. 9, ll. 30-31; fig. 3(a).
Accordingly, we determine that the broadest reasonable interpretation of “a
substrate comprising a field of ink” means that the substrate has or includes
a field of ink and does not require the field of ink to be in direct contact with
the substrate. As such, Hoffer discloses a substrate 6 that comprises a field
of ink 16.
Appellants also argue that Hoffer’s patterned release material 14 is
made of a release material instead of an adhesive and Hoffer does not teach
“an ink removal mechanism disposed over said field of ink and comprising
an adhesive surface coupled with said ink.” App. Br. 9. This argument is
not persuasive because, as noted supra, the Examiner finds that the
transparent backing sheet 12 of Hoffer, not the patterned release material 14,
is the claimed ink removal mechanism having an adhesive surface.
Appellants further argue that the term “void,” an example of a
message revealed by the label of Hoffer, is not “‘information distinct to said
object,’ as recited by independent Claim 9.” App. Br. 10. We disagree. The
term “void,” as used in Hoffer’s label, is distinct to the carton 4 because it
indicates that the carton has been tampered with. Hoffer, col. 1, ll. 43-45;
col. 2, ll. 29-30; col. 4, ll. 36-38.
For the above reasons, we sustain the rejection of independent claims
1 and 9 under 35 U.S.C. § 102(b) as being anticipated by Hoffer. We also
sustain the rejection of claims 2-8 and 10-16, which depend from claim 1 or
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claim 9, and for which Appellants do not advance any separate arguments.
App. Br. 10.
Rejection II
The Examiner finds that Adamoli discloses applying a field of ink 40
to a substrate 10, patterning a preconfigured pattern 42 on the ink, and
coupling a revealing mechanism 50 operable to reveal the preconfigured
pattern. Ans. 4. The Examiner also finds that the 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 “invisibly identifies an object,” the Examiner finds that “invisible”
can mean not only “not visible,” but also “concealed from sight” or “not
easily seen or noticed.” Ans. 6.
Appellants point out that one portion of Adamoli describes the pattern
42 as “transparent, almost unnoticeable” (App. Br. 12 (quoting Adamoli, col.
8, ll. 63-64)) and argue that “transparent, almost unnoticeable” does not
teach “unrevealed and which invisibly identifies,” as recited in claim 9 (App.
Br. 13). Appellants also take issue with the Examiner’s finding regarding
the meaning of “invisible,” asserting that “not easily noticed or detected” or
“concealed from sight” would not make sense when used to describe ink,
and “it is clear that ‘invisible’ in Claim 9 means impossible to see.” Reply
Br. 2. In addition, Appellants note that a dictionary definition of “invisible
ink” is “[i]nk that is colorless and invisible until treated by a chemical, heat,
or special light.” Id.
Claim 9 requires that the preconfigured pattern “is unrevealed” and
“invisibly identifies an object.” We agree with the Examiner that the pattern
42 of Adamoli meets both of these requirements. Adamoli discloses that
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removal of the film or revealing mechanism 50 causes the underlying pattern
42 and the portion of ink 40 thereunder to be removed “to reveal” the outer
surface of the carton 10 and the word or message defined by the pattern 42.
Col. 8, l. 67 – col. 9, l. 5. The pattern 42 of Adamoli thus is unrevealed prior
to removal of the revealing mechanism 50.
Regarding the “invisibly identifies an object” recitation, we initially
note that it is not clear how a pattern could invisibly identify an object. Our
understanding of Appellants’ disclosure is that the pattern does not identify
the object until it is revealed and no longer invisible. See, e.g., Spec. 7, ll. 1-
7 (describing the revealed information 150, rather than the preconfigured
pattern 140, as identifying the item to which the label is attached). We
accordingly interpret this recitation in claim 9 to mean that the preconfigured
pattern is invisible.
We disagree with Appellants that Adamoli’s single description of the
pattern 42 as being “almost unnoticeable” precludes a finding that the
pattern is invisible. Adamoli also discloses that (1) the pattern 42 is
designed to provide evidence of tampering “should the pattern become
visible” (col. 7, ll. 13-15), and (2) a “potential purchaser sees the word
‘VOID’” after the pattern-defining coating 42 and the ink thereunder are
removed (col. 9, ll. 1-7 (emphasis added)). These disclosures suggest that
Adamoli’s pattern 42 is not visible prior to being revealed.
Appellants’ argument that the term “invisible” as used in claim 9
means “impossible to see” rather than “not easily noticed or detected” or
“concealed from sight” is not persuasive. Appellants appear to be arguing
that “invisible” should be interpreted to mean a greater degree of invisibility
than “not easily seen or detected” or “concealed from sight.” However,
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Appellants’ Specification states the “field of ink 130 comprises a pattern or
image wherein ink 310a and ink 310b are indistinguishable from the image
or pattern. In so doing, preconfigured pattern 140 comprised of ink (310a,
310b) is invisible and unrevealed until differentially adhering ink (310a,
310b) is removed.” Spec. 10, ll. 19-23. Based on this description, we see no
reason why the broadest reasonable interpretation of “invisible” would be
limited to a meaning narrower than “not visible,” “concealed from sight,” or
“not easily seen or noticed” as construed by the Examiner.
Appellants’ argument based on a dictionary definition of invisible ink
is not persuasive because claim 9 does not recite, and Appellants’
Specification does not disclose, the use of invisible ink. Instead, Appellants’
Specification describes using colored ink. Spec. 10, ll. 18-19.
As such, the preponderance of the evidence in this case weighs against
Appellants’ positions, and in favor of the Examiner’s position that the
pattern 42 of Adamoli is unrevealed and invisible prior to removal of the
revealing mechanism 50.
We thus sustain the rejection of independent claim 9 under 35 U.S.C.
§ 102(b) as being 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 arguments. App. Br. 14.
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 which may
comprise a scratch-off covering (irreversibly revealing).” Ans. 4.
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Appellants argue that Fiala discloses a personalized identification
number (PIN) 1.32 printed on an activation card 1.78 and a cover 1.82 that
covers the PIN 1.32 and does not disclose “coupling a covert label to an
object, said covert label comprising said preconfigured pattern, wherein said
preconfigured pattern is unrevealed,” as called for by claim 18. App. Br. 15.
Appellants’ argument appears to be that because Fiala’s PIN 1.32 is printed
directly on the activation card 1.78, it cannot be a covert label that is coupled
to the activation card. We find this argument to be unconvincing and agree
with the Examiner that “‘a label’ . . . may include a printed indicia as
disclosed by Fiala.” Ans. 7.
We are also not persuaded by Appellants’ argument that:
if Fiala’s printing on the activation card 1.78 is a label,
then Fiala’s label is not unrevealed. It is Fiala’s cover
that is placed on top of Fiala’s printing after the printing
is coupled to Fiala’s object that covers up the printing.
For similar reasons, Appellants respectfully submit that
Fiala’s printing does not comprise said preconfigured
pattern, wherein said preconfigured pattern is unrevealed.
Reply Br. 2. First, claim 18 does not recite that the label is unrevealed; the
claim calls for the preconfigured pattern to be unrevealed. Second, the fact
that Fiala’s covering 1.82 corresponds to the claimed revealing mechanism,
and thus cannot be part of the claimed covert label, does not mean that
“Fiala’s printing” (i.e., the PIN 1.32) cannot comprise a preconfigured
pattern that is unrevealed. Claim 18 does not require that the preconfigured
pattern be concealed by structure other than the revealing mechanism.
For these reasons, we sustain the rejection of independent claim 18
under 35 U.S.C. § 102(b) as being anticipated by Fiala. We also sustain the
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rejection of claims 19 and 20, which depend from claim 18, and for which
Appellants do not advance any separate arguments. App. Br. 16.
DECISION
We affirm the decision of the Examiner rejecting claims 1-20.
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

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