Ex Parte Hill et al

Patent Trial and Appeal Board

Feb 14, 2013

11425224 (P.T.A.B. Feb. 14, 2013)

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.
11/425,224 06/20/2006 Dean R. Hill 200007-01054 8913
7590 02/15/2013
Grant E. Coffield
Eckert Seamans Cherin & Mellott, LLC
44th Floor
600 Grant Street
Pittsburgh, PA 15219
EXAMINER
ALLEN, STEPHONE B
ART UNIT PAPER NUMBER
2872
MAIL DATE DELIVERY MODE
02/15/2013 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 PATENT TRIAL AND APPEAL BOARD
____________________

Ex parte DEAN R. HILL, ROBERT E. RENTON, ANDREW K. ROWE,
and PAUL DUNN
____________________

Appeal 2010-009460
1

Application 11/425,224
Technology Center 2800
____________________

Before JEAN R. HOMERE, JASON V. MORGAN, BRYAN F. MOORE,
Administrative Patent Judges.

HOMERE, Administrative Patent Judge.

DECISION ON APPEAL

1
The real party in interest is OpSec Security Group, Inc. (App. Br. 2.)

Appeal 2010-009460
Application 11/425,224

2
STATEMENT OF THE CASE
Appellants appeal under 35 U.S.C. § 134(a) from the Examiner’s final
rejection of claims 1-17. Claims 18-27 have been cancelled. (App. Br. 2.)
We have jurisdiction under 35 U.S.C. § 6(b).
We reverse.
Appellants’ Invention
Appellants invented an optically variable device (OVD) (1) with
diffraction-based micro-optics (18) for magnifying the visual representation
of a micro-object (14) viewed from a relative point of observation (26).
(Figure 1, Specification 1, ll. 7-10.) In particular, the micro-object (14) is
disposed in a first portion (6) of the OVD substrate (4) between the
diffractive structure (18) in a second portion (8) of the OVD substrate (4)
and the observation point (26). (Id. at 4, ll. 3-22.)
Illustrative Claim
Independent claim 1 further illustrates the invention as follows:
1. An optically variable device comprising:
a substrate including a first portion and a second portion;
at least one micro-object disposed on the first portion of
said substrate;
and
a diffractive structure disposed on the second portion of
said substrate,
wherein at least one magnified visual representation of
said micro-object is observed when said optically variable
device is observed from a predetermined relative observation
point and said micro-object is disposed between said diffractive
structure and said observation point.

Appeal 2010-009460
Application 11/425,224

3
Prior Art Relied Upon
The Examiner relies on the following prior art as evidence of
unpatentability:
Phillips US 2005/0128543 A1 Jun. 16, 2005
Thompkin WO 97/19820 Jun. 5, 1997

Rejections on Appeal
The Examiner rejects the claims on appeal as follows:
1. Claims 1-6, and 8-17 stand rejected under 35 U.S.C. § 102(b) as
being anticipated by Tompkin.
2. Claim 7 stands rejected under 35 U.S.C. § 103(a) as being
unpatentable over the combination of Tompkin and Phillips.
ANALYSIS
We consider Appellants’ arguments seriatim as they are presented in
the Appeal Brief, pages 7-11 and the Reply Brief, pages 2-8.
Dispositive Issue: Have Appellants shown the Examiner erred in
finding that Tompkin describes a magnified visual representation of a
micro-object being disposed between a diffractive structure and an
observation point, as recited claim 1?
Appellants argue that Tompkin does not describe the disputed
limitations emphasized above. In particular, Appellants argue that Tompkin
discloses placing a microlens between an observation point and microscopic
relief structures to thereby display traditional moire color changing effects
caused by altering the direction of incidence of light onto effective structures
Appeal 2010-009460
Application 11/425,224

4
of a foil. (App. Br. 7-9.) However, Appellants argue that Tompkin’s
disclosure of a color shift does not describe the magnification of a visual
representation of a micro-object, as claimed. (Id. at 8.) Further, Appellants
argue that Tompkin’s teaching does not describe the object being disposed
between a diffractive structure and an observation point. (Id. at 9.)
In response, the Examiner concludes that because claim 1 is directed
to an apparatus, the functional limitation whereby the magnified
representation of a micro-object is observed cannot be properly relied upon
to distinguish the claim over the Tompkin reference. (Ans. 7.) Rather, the
apparatus claim must be distinguished from the cited prior art by what it is
as opposed to what it does. (Id.) Further, the Examiner finds that even if the
functional limitation were given patentable weight, Tompkin’s disclosure of
microstructures that interact with a symbol representation to thereby make
the symbol visible teaches the disputed limitations. (Id. at 8-9.)
On the record before us, we do not agree with the Examiner’s finding
of anticipation. First, while the Examiner correctly points out that an
apparatus claim cannot be distinguished from the prior art solely based upon
a functional limitation recited therein, the functional limitation cannot be
ignored outright. That is, there must be a showing that the equivalent
structure recited in the prior art is capable of performing the recited

Appeal 2010-009460
Application 11/425,224

5
function.
2
As argued by Appellants, Tompkin’s optical information carrier
is not capable of performing the recited functions set forth above. In
particular, we agree with Appellants that while the microstructures are not
perceptible to the naked eye, those relief structures are mere gratings
through which diffracted lights to shine to illuminate a partially covered
layer mounted thereon containing the symbol “VALID.” (Tompkin, 11, ll.
1-12, Reply Br. 3-4.) Thus, we echo Appellants’ argument that while
Tompkin discloses using a diffracted light to make the microstructures and
the representative symbol visible to the naked eye, neither of the structures
nor the symbol is magnified or enlarged (as per the Examiner’s claim
interpretation, Ans. 8.) Because Appellants have shown at least one error in
the Examiner’s anticipation rejection, we need not reach Appellants’
remaining arguments. It follows that Appellants have shown error in the
Examiner’s rejection of claim 1.

2
Claims directed to an apparatus must be distinguished from the prior art in
terms of structure rather than function, see, e.g., In re Schreiber, 128 F.3d
1473, 1477-78 (Fed. Cir. 1997), in order to satisfy the functional limitations
in an apparatus claim, however, the prior art apparatus must be capable of
performing the claimed function. Id. at 1478. The prior art structure must
be capable of performing the function without further programming.
Typhoon Touch Techs., Inc. v. Dell, Inc., 659 F.3d 1376, 1380 (Fed. Cir.
2011) (discussing Microprocessor Enhancement Corp. v. Texas Instruments,
Inc., 520 F.3d 1367 (Fed.Cir.2008)). When the functional language is
associated with programming or some other structure required to perform
the function, that programming or structure must be present in order to meet
the claim limitation. Id.
Appeal 2010-009460
Application 11/425,224

6
Because claims 2-17 recite the disputed limitations above, Appellants
have similarly shown error in the rejections of claims 2-17.

DECISION
We reverse the Examiner’s rejections of claims 1-17 as set forth
above.

REVERSED

ELD