Ex Parte Dietemann

Patent Trial and Appeal Board

Jun 9, 2016

12682816 (P.T.A.B. Jun. 9, 2016)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE FIRST NAMED INVENTOR
12/682,816 05/13/2010 Philippe Dietemann
92793 7590 06/13/2016
OLIFF PLC (with Nony)
P.O. Box 320850
Alexandria, VA 22320-4850
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.
145251 6122
EXAMINER
LEWIS, JUSTIN V
ART UNIT PAPER NUMBER
3725
NOTIFICATION DATE DELIVERY MODE
06/13/2016 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):
OfficeAction92793@oliff.com
jarmstrong@oliff.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte PHILIPPE DIETEMANN
Appeal2014-000461
Application 12/682,816 1
Technology Center 3700
Before MICHAEL C. ASTORINO, PHILIP J. HOFFMANN, and
MATTHEWS. MEYERS, Administrative Patent Judges.
ASTORINO, Administrative Patent Judge.
DECISION ON APPEAL
STATEMENT OF THE CASE
The Appellant appeals under 35 U.S.C. § 134 from the Examiner's
decision rejecting claims 26-51. We have jurisdiction over the appeal under
35 U.S.C. § 6(b). An oral hearing was held on May 24, 2016.
We AFFIRM-IN-PART.
1 According to the Appellant, "[t]he real party in interest ... is Arjowiggins
Security." Appeal Br. 1.
Appeal2014-000461
Application 12/682,816
Claimed Subject Matter
Claim 26, reproduced below, is illustrative of the subject matter on
appeal.
26. A security sheet including an iridescent security mark
observable on the surface of the sheet, said mark including at
least one zone presenting an iridescent effect, said zone having
coloration observable by reflected light in normal observation
with the naked eye and including iridescent pigments that are
practically colorless in normal observation and that present an
iridescent effect that is visible only in oblique observation, said
coloration making said zone perceptible in normal observation.
Rejections
I. Claims 26, 27, 33, 34, 39, and 48-51 are rejected under 35 U.S.C.
§ 103(a) as unpatentable over Bleikholm (US 2007/0080533 Al, pub.
Apr. 12, 2007) and Despland (US 8,147,932 B2, iss. Apr. 3, 2012).
II. Claims 28-32, 35-38, 40, and 41 are rejected under 35 U.S.C.
§ 103(a) as unpatentable over BleikJ10lm; Despland; and Lyen
(US 2004/0061325 Al, pub. Apr. 1, 2004).
III. Claims 42--47 are rejected under 35 U.S.C. § 103(a) as
unpatentable over Bleikholm, Despland, and Brown (US 2003/0089251 Al,
pub. May 15, 2003).
ANALYSIS
Rejection I
Claims 26, 27, 34, 39, and 48-51
The Appellant argues that Despland does not disclose a zone having
coloration or coloration observable by reflected light in normal observation.
Appeal Br. 5-12, Reply Br. 2-6. For similar reasons the Appellant argues
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Application 12/682,816
that the Examiner improperly uses hindsight to reconstruct the claimed
invention. Appeal Br. 12, Reply Br. 6-7.
The Appellant's arguments are based on Despland's teaching of a
security note that appears "black" at a normal observation and as such, does
not disclose a "zone having coloration observable by reflected light in
normal observation," as recited in claim 26. Notably, the Appellant points
out that Despland defines the term "black" as:
In the context of the present disclosure, black shall be
understood as having a lightness (L *) smaller than 50 units and
a chroma (C*) smaller than 15 units in the CIELab 1976 color
system (as characterised on a spectrophotometer under diffuse
illumination, specular excluded, and 8° detection measuring
conditions, as known in the art).
Appeal Br. 8 (citing Despland, col. 3, 11. 28-33 (emphasis added)); see Reply
Br. 2, 5, 7.
The term "chroma" is defined as "the purity of a color, or its freedom
from white or gray." DICTIONARY.COl\1 lJ}~ABRIDGED ("chroma,"
def. 1 ), http://www.dictionary.com/browse/chroma (last visited May 24,
2015). Accordingly, "a chroma (C*) smaller than 15 units in the CIELab
197 6 color system" suggests a range in "the purity of color" that starts at a
unit value smaller than 15 and ends at the lowest value on the CIELab 197 6
color system for chroma. For example, the range includes a color in the
CIELab 1976 color system where lightness (L*) is 49 units and chroma (C*)
is 14 units.
After carefully considering the Appellant's arguments, we determine
that the Appellant fails to persuasively explain how colors within the entire
range of "black," as defined by Despland, fail to correspond to a zone of
coloration observable by reflected light with the naked eye. Thus, the
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Application 12/682,816
Examiner's rejection of claims 26, 27, 34, 39, and 48-51 as unpatentable
over Bleikholm and Despland is sustained.
Claim 33
The Appellant contends that the Examiner's rejection of claim 33 is in
error because Despland explicitly teaches away from using a color, including
a pastel hue, provided by reflected light at a normal view. See Appeal
Br. 12-14. The Appellant supports this contention by asserting that
Despland's disclosure is directed to having a color shifting security element
that displays a more evident change between black and color in the normal
view and that a person of ordinary skill in the art would not substitute a
colored dye for Despland's black, which absorbs rather than reflects light, in
the normal view. See id. The Appellant's contention is not persuasive
because it is based on a misunderstanding of the Examiner's rejection. See
Ans. 21. As explained by the Examiner, the rejection of claim 33 is not
based on a substitution of black in the normal view as taught by Despland,
but rather the addition of a pastel hue. Ans. 20-21; see Final Act. 4. As
such, the Appellant's contention is not persuasive.
Thus, the Examiner's rejection of claim 33 as unpatentable over
Bleikholm and Despland is sustained.
Rejection II
Claims 28-32, 35-38, 40, and 41
The Appellant points out that the Examiner relies on Lyen, and does
not rely on Bleikholm or Despland, to teach "a mark comprising at least two
zones, each presenting an iridescent effect," as recited in claim 28. Appeal
Br. 15.
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Application 12/682,816
In response, the Examiner emphasizes that claim 28 uses the term
"presents" in "a mark comprising at least two zones, each presenting an
iridescent effect." See Ans. 21. The Examiner finds that images 80 and 90
present two "zone layers" that lie atop one another, and because Lyen's
image 90 uses iridescent ink, both images 80 and 90 "present" an iridescent
effect. See Final Act. 6, Ans. 21. However, we disagree that image 80
produces an iridescent effect merely because images 80 and 90 may lie atop
one another. In that case, both "zone layers" do not produce an iridescent
effect, only one zone layer, i.e., image 90, would produce an iridescent
effect. As such, we disagree with the Examiner that the result of the
Examiner's proffered combination of teachings and reasoning would not
result in "a mark comprising at least two zones, each presenting an iridescent
effect," as recited in claim 28.
The Examiner also determines "in the alternative, as an obvious
matter of design choice, a person of ordinary skill might have also opted to
dispose said layers spatially adjacent each other in a desired are of the
Bleikholm substrate P." Final Act. 7. However, if the "zone layers" were
spatially adjacent, than the result of the modification would not be that both
"zone layers" produce an iridescent effect, only one zone layer would
produce an iridescent effect. As such, we also disagree with the Examiner
that the result of the Examiner's alternative proffered combination of
teachings and reasoning would result in "a mark comprising at least two
zones, each presenting an iridescent effect," as recited in claim 28.
Thus, the Examiner's rejection of claim 28 as unpatentable over
Bleikholm, Despland, and Lyen is not sustained. Additionally, claims 29--
32, 35-38, 40, and 41 depend from claim 28 (Appeal Br., Claims App.), and
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the Examiner's additional findings and reasoning for the rejection of these
claims do not cure the deficiency of the Examiner's rejection of claim 28.
Therefore, the Examiner's rejection of claims 29-32, 35-38, 40, and 41 as
unpatentable over Bleikholm, Despland, and Lyen is not sustained.
Rejection III
Claims 42-46
The Appellant does not provide further arguments for the rejection of
claims 42--46 as unpatentable over Bleikholm, Despland, and Brown.
Appeal Br. 16-17. The Appellant merely relies on the arguments presented
for the Examiner's rejection of claim 26 for this ground of rejection. See id.
at 17. For the same reasons we have sustained the rejection of claim 26, we
likewise sustain the Examiner's rejection of claims 42--46 as unpatentable
over Bleikholm, Despland, and Brown.
Claim 47
Claim 47 depends from claim 28. Appeal Br., Claims App. The
Examiner rejects claim 47 as unpatentable over Bleikholm, Despland, and
Brown. Final Act. 10-12. As discussed above the Examiner rejection of
claim 28 is inadequately supported. And, the Examiner's added findings and
reasoning concerning Brown's teaching of a mark including tactile-effect
element (Final Act. 10-12) does not cure the deficiency concerning the
Examiner's rejection of claim 28. Thus, the Examiner's rejection of claim
47 as unpatentable over Bleikholm, Despland, and Brown is not sustained.
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DECISION
We AFFIRM the Examiner's decision rejecting: claims 26, 27, 33, 34,
39, and 48-51under35 U.S.C. § 103(a) as unpatentable over Bleikholm and
Despland; and claims 42--46 under 35 U.S.C. § 103(a) as unpatentable over
Bleikholm, Despland, and Brown.
We REVERSE the Examiner's decision rejecting: claims 28-32, 35-
38, 40, and 41 under 35 U.S.C. § 103(a) as unpatentable over Bleikholm,
Despland, and Lyen; and claim 47 under 35 U.S.C. § 103(a) as unpatentable
over Bleikholm, Despland, and Brown.
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
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