Ex Parte Fraser et al

Board of Patent Appeals and Interferences

May 26, 2011

10655625 (B.P.A.I. May. 26, 2011)

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.
10/655,625 09/04/2003 Jay Fraser TDT 209.1 6936
90150 7590 05/27/2011
Ostrolenk Faber LLP
1180 Avenue of the Americas
New York, NY 10036
EXAMINER
CERVETTI, DAVID GARCIA
ART UNIT PAPER NUMBER
2436
MAIL DATE DELIVERY MODE
05/27/2011 PAPER
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.
PTOL-90A (Rev. 04/07)

UNITED STATES PATENT AND TRADEMARK OFFICE
_____________

BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
_____________

Ex parte JAY FRASER and LARRY WEBER
_____________

Appeal 2009-008159
Application 10/655,625
Technology Center 2400
______________

Before, DENISE M. POTHIER, JEFFREY S. SMITH, and
DAVID M. KOHUT, Administrative Patent Judges.

KOHUT, Administrative Patent Judge.

DECISION ON APPEAL
This is a decision on appeal under 35 U.S.C. § 134(a) of the final
rejection of claims 1-22 and 26-28.1 We have jurisdiction under 35 U.S.C.
§ 6(b).
We affirm-in-part the Examiner’s rejection of these claims.

1 Claims 23-25 were previously cancelled.
Appeal 2009-008159
Application 10/655,625

2
INVENTION
The invention is directed to a system, method, and apparatus for
self-authenticating a physical document by providing a characteristic in the
physical document that can be used for authentication purposes. See
Abstract. Claim 1 is representative of the invention and is reproduced
below:
1. A method for self-authenticating a physical document,
comprising:
providing a physical document having a permanently fixed
stochastically variable characteristic;
measuring the stochastically variable characteristic to a
precision greater than the stochastic variation, to thereby
determine a randomly variable attribute of the physical
document; and
encoding a description of the stochastically variable
characteristic and a deterministic identifier of the physical
document in association with the physical document in an
encoding process resistant to counterfeiting of the physical
document,
wherein the encoding is uniquely associated with the
physical document and association with a different physical
document is discoverable.

REFERENCE
Nagel US 7,152,047 B1 Dec. 19, 2006
(filed May 24, 2000)

REJECTIONS AT ISSUE
Claims 1-8, 10- 22, 26, and 28 are rejected under 35 U.S.C. § 102(e)
as being anticipated by Nagel. Ans. 4-11.
Claims 9 and 27 are rejected under 35 U.S.C. § 103(a) as being
unpatentable over Nagel. Ans. 11-12.
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ISSUES2
Claims 1-3, 5-11, 15-22, 26,3 and 28
Appellants argue on pages 14-20 of the Appeal Brief and pages 1-8 of
the Reply Brief that the Examiner’s rejection of claims 1-3, 5-11, 15-22, 26,
and 28 is in error. Appellants argue that the Nagel reference is not prior art.
App. Br. 16; Reply Br. 1.
Thus, with respect to claims 1-3, 5-11, 15-22, 26, and 28, Appellants’
contention presents the issue: Did the Examiner err in finding that Nagel
qualifies as prior art?
Claim 4
Appellants argue on pages 22-23 of the Appeal Brief that the
Examiner’s rejection of claim 4 is in error. Appellants argue that Nagel does
not disclose determining stochastically variable features using an automated
process and, therefore, does not disclose what is claimed in claim 4. App.
Br. 23.
Thus, with respect to claim 4, Appellants’ contention presents the
issue: Did the Examiner err in finding Nagel discloses the permanently fixed
stochastically variable characteristic comprises a physical watermark formed
in the physical document stock during a stage of physical document stock
manufacture?
Claim 12

2 The objection to claim 27 was withdrawn by the Examiner. Ans. 13.
3 We note that claim 26, while not separately argued, is drawn to a hybrid
claim, i.e., a claim that recites both an apparatus and a method of using that
apparatus. See Rembrandt Data Techs., LP v. AOL, LLC, 98 U.S.P.Q.2d
1393, 1400 (Fed. Cir. 2011).
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Application 10/655,625

4
Appellants argue on pages 23-24 of the Appeal Brief that the
Examiner’s rejection of claim 12 is in error. Appellants argue that Nagel
does not disclose integrating, during manufacturing, a dynamic watermark in
a stock of the physical document. App. Br. 24.
Thus, with respect to claim 12, Appellants’ contention presents the
issue: Did the Examiner err in finding Nagel discloses defining a dynamic
watermark which is integrated in a stock of the physical document during
manufacture of a physical document stock?
Claim 13
Appellants argue on pages 24-25 of the Appeal Brief that the
Examiner’s rejection of claim 13 is in error. Appellants argue that Nagel
does not disclose a digitally reconfigurable watermark. App. Br. 25.
Thus, with respect to claim 13, Appellants’ contention presents the
issue: Did the Examiner err in finding Nagel discloses a calendaring roll
having a digitally reconfigurable watermark?
Claim 14
Appellants argue on pages 25-26 of the Appeal Brief that the
Examiner’s rejection of claim 14 is in error. Appellants argue that Nagel
does not disclose a dynamic watermark with a variable translucency two-
dimensional (2D) code. App. Br. 26.
Thus, with respect to claim 14, Appellants’ contention presents the
issue: Did the Examiner err in finding Nagel discloses a dynamic watermark
with a variable translucency 2D code?
Claim 27
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Appellants argue on pages 26-28 of the Appeal Brief that the
Examiner’s rejection of claim 27 is in error. Appellants argue that Nagel
does not disclose using digital control to create watermarks. App. Br. 28.
Thus, with respect to claim 27, Appellants’ contention presents the
issue: Did the Examiner err in finding Nagel teaches or suggests generating
watermark elements in response to a digital control?
ANALYSIS
Claims 1-3, 5-11, 15-22, 26, and 28
Appellants’ arguments have not persuaded us of error in the
Examiner’s rejection of claim 1. Appellants argue that the submitted
Declarations prove conception of the invention along with diligence prior to
the effective date of the Nagel reference and the filing date of Appellants’
prior application. App. Br. 15. Thus, Appellants contend that the invention
was constructively reduced to practice on the same date as the Nagel
reference. App. Br. 15-16; Reply Br. 4. We disagree.
Appellants are attempting to use working documents of their prior
applications to prove constructive reduction to practice of the instant
invention. App. Br. 15-16; Reply Br. 4. However, “constructive reduction
to practice occurs upon the filing of a patent application on the claimed
invention” (emphasis added). See Brunswick Corp. v. United States, 34
Fed. Cl. 532, 584 (Fed. Cl. 1995). Since the provisional patent application
for the current invention was not filed until September 4, 2002 (Ans. 13),
constructive reduction to practice did not occur until that time. Additionally,
since Appellants have not shown an actual reduction to practice of the
invention prior to the reference’s effective date or conception of the
invention prior to Nagel’s effective date coupled with due diligence from
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prior to Nagel’s effective date to actual or constructive reduction to practice,
Nagel remains valid prior art. See MPEP §§ 715.07 and 715.07(a).
No other arguments are presented toward the rejections of claims 1-3,
5-11, 15-22, 26, and 28. Therefore, we sustain the Examiner’s rejections of
claims 1-3, 5-11, 15-22, 26, and 28.
Claim 4
Appellants’ arguments have not persuaded us of error in the
Examiner’s rejection of claim 4. Claim 4 recites “wherein the permanently
fixed stochastically variable characteristic comprises a physical watermark
formed in the physical document stock during a stage of physical document
stock manufacturer.” Appellants argue that Nagel discloses human
cognizable watermarks that “are not part of an automated process for
determining stochastically variable features.” App. Br. 23. We do not find
this argument to be persuasive as it is not commensurate in scope with the
claim since the claim does not require an automated process. As a result, we
sustain the Examiner’s rejection of claim 4.
Claim 12
Appellants’ arguments have not persuaded us of error in the
Examiner’s rejection of claim 12. Appellants argue that Nagel does not
disclose integrating, during manufacturing, a dynamic watermark in a stock
of the physical document, as required by claim 12. App. Br. 24. However,
the Examiner finds that Nagel’s watermark is dependent upon the pattern of
the paper which is captured during production and which would create a
“dynamic” or “changing” watermark. Ans. 17. Appellants’ arguments do
not address these specific findings by the Examiner. Thus, we sustain the
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Examiner’s rejection as Appellants’ arguments have not identified an error
in the findings supporting the rejection.
Claim 13
Appellants’ arguments have persuaded us of error in the Examiner’s
rejection of claim 13. Claim 13 requires a calendaring roll to be able to
digitally reconfigure watermarks. Appellants argue that while Nagel
discloses a calendaring roll, Nagel does not disclose a roll that has a digitally
reconfigurable watermark. App. Br. 25. While the Background of Nagel
discloses a plurality of incorporated references that may describe a
reconfigurable watermark, the Examiner does not specifically address based
on an anticipation rejection where or how Nagel discloses a calendaring roll
that has a digitally reconfigurable watermark. Thus, we cannot sustain the
Examiner’s rejection of claim 13.
Claim 14
Appellants’ arguments have not persuaded us of error in the
Examiner’s rejection of claim 14. Claim 14 requires a dynamic watermark
that with a two-dimensional varying translucency. Appellants argue that
column 44, lines 30-67, cited by the Examiner, have nothing to do with a
dynamic watermark that has a variable translucency 2D code. App. Br. 26.
In response, the Examiner also cites to Nagel, column 15, lines 1-30,
wherein Nagel describes a two-dimensional distribution of florescent
dichroic fibers. Ans. 18. Appellants’ arguments do not address these
specific findings by the Examiner. Thus, we sustain the Examiner’s
rejection as Appellants’ arguments have not identified an error in the
findings supporting the rejection.
Claim 27
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Appellants’ arguments have persuaded us of error in the Examiner’s
rejection of claim 27. Claim 27 requires generating watermark elements in
response to a digital control. Appellants argue that Nagel does not disclose
using a digital control to create watermarks. App. Br. 28. While the
Background of Nagel discloses other references that discuss watermarks and
their creation and use, the Examiner has not cited to those particular
references nor has the Examiner specifically addressed where or how one of
ordinary skill in the art would have used Nagel to suggest a digital control
that varies watermarks with successive passes, as required by the claim.
Therefore, the Examiner has not established a prima facie case of
obviousness. Thus, we cannot sustain the Examiner’s rejection of claim 27.
CONCLUSION
The Examiner did not err in finding that Nagel qualifies as prior art.
The Examiner did not err in finding Nagel discloses the permanently
fixed stochastically variable characteristic comprises a physical watermark
formed in the physical document stock during a stage of physical document
stock manufacture.
The Examiner did not err in finding Nagel discloses defining a
dynamic watermark which is integrated in a stock of the physical document
during manufacture of a physical document stock.
The Examiner erred in finding Nagel discloses a calendaring roll
having a digitally reconfigurable watermark.
The Examiner did not err in finding Nagel discloses a dynamic
watermark with a variable translucency 2D code.
The Examiner erred in finding Nagel teaches or suggests generating
watermark elements in response to a digital control.
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Application 10/655,625

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SUMMARY
The Examiner’s decision to reject claims 1-12, 14-22, 26, and 28 is
affirmed and the Examiner’s decision to reject claims 13 and 27 is reversed.
No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. § 1.136 (a)(1)(iv).

AFFIRMED-IN-PART

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