Ex Parte Hoshino

Board of Patent Appeals and Interferences

Sep 23, 2009

09899075 (B.P.A.I. Sep. 23, 2009)

UNITED STATES PATENT AND TRADEMARK OFFICE 1
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3
BEFORE THE BOARD OF PATENT APPEALS 4
AND INTERFERENCES 5
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Ex parte SATOSHI HOSHINO 8
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Appeal 2009-004475 11
Application 09/899,075 12
Technology Center 3600 13
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Decided: September 23, 2009 16
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Before: MURRIEL E. CRAWFORD, JOSEPH A. FISCHETTI, and BIBHU 20
R. MOHANTY, Administrative Patent Judges. 21
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CRAWFORD, Administrative Patent Judge. 23
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DECISION ON APPEAL26
Appeal 2009-004475
Application 09/899,075

2
STATEMENT OF THE CASE 1
Appellant appeals under 35 U.S.C. § 134 (2002) from a final rejection 2
of claims 1 to 8, 14, and 15. We have jurisdiction under 35 U.S.C. § 6(b) 3
(2002). The Appellant appeared for oral hearing on September 9, 2009. 4
Appellant invented an authenticity checker for driver’s license 5
(Spec. 1). 6
Claim 1 under appeal reads as follows: 7
1. An authenticity checker of driver's license 8
comprising: 9
a driver's license image capturing module 10
for image capturing a watermark of a driver's 11
license from both obverse and reverse side; and 12
an authenticity judging module which 13
judges the driver's license is a forgery if neither 14
of the watermarks image captured from the 15
obverse nor reverse side by the driver's license 16
image capturing module is recognized as a 17
regular watermark, and judges the driver's license 18
is authentic if at least one of watermarks is 19
recognized as a regular watermark. 20
Claim 14 under appeal reads as follows: 21
14. A method of authenticating a driver's 22
license, the method comprising: 23
gathering first driver's license imaging data 24
based on a watermark on the obverse side of a 25
driver's license, wherein the gathering of first 26
driver's license imaging data further comprises 27
irradiating the driver's license; 28
determining if the watermark on the obverse 29
side is regular based on the first driver's license 30
imaging data; 31
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if the watermark on the obverse is 1
determined not regular, gathering second driver's 2
license imaging data based on a watermark on the 3
reverse side of the driver's license, and determining 4
if the watermark on the reverse side is regular 5
based on the second driver's license imaging data, 6
and wherein the gathering of first driver's license 7
imaging data further comprises irradiating the 8
driver's license; 9
wherein, the driver's license is a forgery if 10
the watermarks on the obverse and reverse sides 11
are both deemed not regular, and the driver's 12
license is authentic if either watermark on the 13
obverse and reverse side is deemed regular. 14
The prior art relied upon by the Examiner in rejecting the claims on 15
appeal is: 16
Kofune US 5,483,069 Jan. 9, 1996 17
Disclosed Prior Art at pages 1 to 2 of the Appellant’s Specification 18
(hereinafter “DPA”). 19
The Examiner rejected claims 1 to 8, 14, and 15 under 35 U.S.C. § 20
103(a) as being unpatentable over Kofune in view of DPA. 21
22
ISSUES 23
Do the recitations in claims 1 to 8 comply with the requirements of 35 24
U.S.C. § 112, second paragraph? 25
Has the Appellant shown that the Examiner erred in finding that 26
Kofune discloses a method in which the bill is judged a forgery if both 27
watermarks from the obverse side and the reversed side are not recognized 28
as a regular watermark as required by claims 14 and 15? 29
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FINDINGS OF FACT 1
Appellant’s Specification discloses: 2
it was turned out that there were two kinds of 3
driver’s licenses. One is a “face-watermarked type 4
driver’s license”, whose image data obtained by 5
shooting its obverse show a clear watermark, while 6
the image data of the reverse side do not. The 7
other one is a “back-watermarked type driver’s 8
license”, whose image data obtained by shooting 9
its backside show a clear watermark, but the image 10
data of the obverse do not. Consequently, the 11
conventional devices that judge the authenticity of 12
a driver’s license only by the image data of the 13
obverse may judge an authentic back-watermarked 14
type driver’s license to be false by mistake. 15
(Spec. 1 to 2). 16
Appellant argues that Kofune does not disclose a watermark on the 17
obverse side and a watermark on the reverse side (App. Br. 13). 18
Kofune discloses one watermark D (col. 5, ll. 54 to 55; Fig. 8a). 19
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PRINCIPLES OF LAW 21
Indefiniteness 22
The second paragraph of 35 U.S.C. § 112 requires claims to set out 23
and circumscribe a particular area with a reasonable degree of precision and 24
particularity. In re Johnson, 558 F.2d 1008, 1015 (CCPA 1977). In making 25
this determination, the definiteness of the language employed in the claims 26
must be analyzed, not in a vacuum, but always in light of the teachings of 27
the prior art and of the particular application disclosure as it would be 28
interpreted by one possessing the ordinary level of skill in the pertinent art. 29
Id. 30
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As the court in In re Wilson, 424 F.2d 1382 (CCPA 1970) stated: 1
“All words in a claim must be considered in judging the patentability of that 2
claim against the prior art. If no reasonably definite meaning can be 3
ascribed to certain terms in the claim, the subject matter does not become 4
obvious- the claim becomes indefinite.” Id. at 1385. 5
6
Obviousness 7
In rejecting claims under 35 U.S.C. § 103, it is incumbent upon the 8
Examiner to establish a factual basis to support the legal conclusion of 9
obviousness. See In re Fine, 837 F.2d 1071, 1073 (Fed. Cir. 1988). In so 10
doing, the Examiner must make the factual determinations set forth in 11
Graham v. John Deere Co., 383 U.S. 1, 17-18 (1966). Furthermore, 12
“[‘]there must be some articulated reasoning with some rational 13
underpinning to support the legal conclusion of obviousness’ .... [H]owever, 14
the analysis need not seek out precise teachings directed to the specific 15
subject matter of the challenged claim, for a court can take account of the 16
inferences and creative steps that a person of ordinary skill in the art would 17
employ.” KSR Int’l Co. v. Teleflex Inc., 550 U.S. 398, 418 (2007) (quoting 18
In re Kahn, 441 F.3d 977, 988 (Fed. Cir. 2006)). 19
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ANALYSIS 21
New ground of rejection 22
Pursuant to 37 C.F.R. § 41.50(b) (2008) we make the following new 23
ground of rejection. Claims 1 to 8 are rejected under 35 U.S.C. § 112, 24
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second paragraph, as being indefinite for failing to particularly point out and 1
distinctly claim the subject matter which the Appellant regards as the 2
invention. 3
Line 2 of the claim 1 recites “a driver’s license image capturing 4
module for image capturing a watermark.” (Emphasis added). This 5
recitation relates to just one watermark. However, lines 6 and 7 recite that 6
the judging module “judges the driver’s license is authentic if at least one of 7
watermarks is recognized as a regular watermark.” (Emphasis added). This 8
recitation indicates that there is more than one watermark. Therefore, it is 9
not understood whether there is one watermark in accordance with the 10
recitation in line 2 or more than one watermark as recited in lines 6 and 7. It 11
appears that the Specification discloses one watermark that is either on the 12
reverse or obverse side indicating that there is only one watermark. 13
However, Appellant’s argument in response to the prior art rejection that 14
Kofune does not disclose a watermark on the obverse side and a watermark 15
on the reverse side seems to indicate that there is a watermark on each side 16
of the driver’s license (App. Br. 13). It is unclear whether claim 1 covers an 17
authenticity judging module that compares one watermark from both the 18
obverse and reverse sides or compares a first watermark on the obverse side 19
and a second watermark on the reverse side. 20
As it is not clear whether claim 1’s authenticity judging module judges 21
one or two watermarks, claim 1 and claims 3, 5, and 7 dependent thereon are 22
not in compliance with the requirements of 35 U.S.C. § 112, second 23
paragraph. 24
Likewise, independent claim 2 recites “a watermark” (emphasis 25
added) in line 2 and recites “watermarks” (emphasis added) in line 9 and 26
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therefore it is not clear whether claim 2’s judging means is judging one or 1
two watermarks. As such, claim 2 and claims 4, 6, and 8 dependent thereon 2
are not in compliance with the requirements of 35 U.S.C. § 112, second 3
paragraph. 4
5
Obviousness 6
In comparing the subject matter of claims 1 to 8 with the applied prior 7
art, it is apparent to us that considerable speculations and assumptions are 8
necessary in order to determine what in fact is being claimed. Since a 9
rejection based on prior art cannot be based on speculations and 10
assumptions, see In re Steele, 305 F.2d 859, 862 (CCPA 1962), we are 11
constrained to reverse, pro forma, the Examiner's rejection of claims 1 to 8 12
under 35 U.S.C. § 103(a). We hasten to add that this is a procedural reversal 13
rather than one based upon the merits of the rejections. 14
Claims 14 and 15 recite a method of authenticating a driver’s license 15
in which a license having a watermark on the obverse side that is not regular 16
and a watermark on the reverse side that is not regular is determined to be a 17
forgery. Kofune does not disclose a watermark on both the obverse and 18
reverse sides of the bill nor a determination of forgery if neither watermark 19
is regular. As such, we will not sustain the Examiner’s rejection of claims 20
14 and 15. 21
22
CONCLUSIONS OF LAW/DECISION 23
The rejection of the Examiner of claims 1 to 8, 14, and 15 under 35 24
U.S.C. § 103(a) is not sustained. 25
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This decision contains a new ground of rejection pursuant to 37 C.F.R. 1
§ 41.50(b). 37 C.F.R. § 41.50(b) provides "[a] new ground of rejection 2
pursuant to this paragraph shall not be considered final for judicial review." 3
37 C.F.R. § 41.50(b) also provides that Appellant, WITHIN TWO 4
MONTHS FROM THE DATE OF THE DECISION, must exercise one of 5
the following two options with respect to the new ground of rejection to 6
avoid termination of the appeal as to the rejected claims: 7
(1) Reopen prosecution. Submit an appropriate 8
amendment of the claims so rejected or new 9
evidence relating to the claims so rejected, or both, 10
and have the matter reconsidered by the examiner, 11
in which event the proceeding will be remanded to 12
the examiner. . . . 13
(2) Request rehearing. Request that the 14
proceeding be reheard under § 41.52 by the Board 15
upon the same record. . . . 16
If Appellant elects prosecution before the Examiner and this does not 17
result in allowance of the application, abandonment or a second appeal, this 18
case should be returned to the Board of Patent Appeals and Interferences for 19
final action on the affirmed rejection, including any timely request for 20
rehearing thereof. 21
No time period for taking any subsequent action in connection with 22
this appeal may be extended under 37 C.F.R. § 1.136(a). See 37 C.F.R. 23
§ 1.136(a)(1)(iv) (2007). 24
REVERSED; 37 C.F.R. § 41.50(b) 25
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hh 1
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SUGHRUE, MION, ZINN, MACPEAK & SEAS 3
2100 Pennsylvania Avenue, N.W. 4
Washington, DC 20037 5