Ex Parte Heim et al

Patent Trial and Appeal Board

May 20, 2014

10512406 (P.T.A.B. May. 20, 2014)

UNITED STATES PATENT AND TRADEMARK OFFICE
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BEFORE THE PATENT TRIAL AND APPEAL BOARD
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Ex parte MANFRED HEIM and CHRISTIAN SCHMITZ
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Appeal 2012-001987
Application 10/512,406
Technology Center 3700
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Before JENNIFER D. BAHR, JILL D. HILL, AND
BEVERLY M. BUNTING, Administrative Patent Judges.

HILL, Administrative Patent Judge.

DECISION ON REQUEST FOR REHEARING

Appeal 2012-001987
Application 10/512,406

2
STATEMENT OF THE CASE
Manfred Heim and Christian Schmitz (Appellants) filed a request for
rehearing, received April 28, 2014 (hereinafter “Request” or “Req.”), in
response to our decision mailed February 28, 2014 (hereinafter “Decision”
or “Dec.”), affirming the Examiner’s rejection of claims 1, 2, 4, 6-9, 12-14,
16-33, 35-41, 53, 57, and 58 under 35 U.S.C. § 103(a) as unpatentable over
Schmitz (US 6,491,324 B1; iss. Dec. 10, 2002). Dec. 6.

ANALYSIS
If a proposed modification would render the prior art unsatisfactory
for its intended purpose, then there is no suggestion or motivation to make
the proposed modification. See In re Gordon, 733 F.2d 900, 902 (Fed. Cir.
1984). Appellants argue that “if the semitransparent layer in Schmitz was
made of the same material as the underlying [magnetic] layer . . ., then it
would not be suitable for its intended purpose of weakening the undesirable
optical properties of the underlying magnetic layer.” Req. 3. Support for
this intended purpose of Schmitz can be found in its Brief Summary of the
Invention, for example from column 1, line 56 through column 2 line 10,
which discusses obscuring a magnetic layer of a security element. We agree
with Appellants. Because one purpose of Schmitz is to obscure undesirable
optical effects of the magnetic layer of the security element, covering the
optically undesirable layer with another layer having the same undesirable
optical effects would be counterintuitive. For this reason, there is no
suggestion to modify Schmitz to provide the same material for both of its
metal layers 5, 15, and prima facie obviousness over Schmitz has not been
established.
Appeal 2012-001987
Application 10/512,406

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DECISION
For the above reasons, we grant Appellants’ Request for “rehearing
and reversal of the rejection of claims 1, 2, 4, 6-9, 12-14, 16-33, 35-41, 53,
57 and 58.” We reverse the rejection of claims 1, 2, 4, 6-9, 12-14, 16-33,
35-41, 53, 57, and 58 under 35 U.S.C. § 103(a) as obvious over Schmitz.

GRANTED
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