Ex Parte Kecht et alDownload PDFPatent Trial and Appeal BoardNov 27, 201713377276 (P.T.A.B. Nov. 27, 2017) Copy Citation 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. 13/377,276 12/09/2011 Johann Kecht 19838.139 3525 22913 7590 Workman Nydegger 60 East South Temple Suite 1000 Salt Lake City, UT 84111 11/29/2017 EXAMINER GRABOWSKI, KYLE ROBERT ART UNIT PAPER NUMBER 3638 NOTIFICATION DATE DELIVERY MODE 11/29/2017 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): Docketing @ wnlaw. com PTOL-90A (Rev. 04/07) UNITED STATES PATENT AND TRADEMARK OFFICE BEFORE THE PATENT TRIAL AND APPEAL BOARD Ex parte JOHANN KECHT and STEPHAN STEINLEIN Appeal 2017-000034 Application 13/377,276 Technology Center 3700 Before JOHN C. KERINS, EDWARD A. BROWN, and LYNNE H. BROWNE, Administrative Patent Judges. BROWNE, Administrative Patent Judge. DECISION ON APPEAL STATEMENT OF THE CASE Johann Kecht and Stephan Steinlein (Appellants) appeal under 35 U.S.C. § 134 from the rejection of claims 31-33, 35^42, and 44^18 under 35 U.S.C. § 103(a) over Yin (US 2013/0146788 Al, published June 13, 2013) and Schneider (US 2005/0181160 Al, published Aug. 18, 2005). We have jurisdiction under 35 U.S.C. § 6(b). We reverse. Appeal 2017-000034 Application 13/377,276 CLAIMED SUBJECT MATTER Claims 31 and 46 are independent. Claim 31, reproduced below, is illustrative of the claimed subject matter: 31. A security feature comprising a plurality of microcapsules contained in a first medium, wherein each of the microcapsules includes a wall encapsulating a second medium, the second medium being a liquid medium, wherein, within the liquid medium of each of the microcapsules, several magnetic particles are distributed, the magnetic particles being movable in the liquid medium, and wherein the magnetic particles are configured to arrange themselves within the microcapsule when affected by a magnetic field to form a light-diffractive regular structure. DISCUSSION Regarding claims 31 and 46, the Examiner finds that Yin discloses a feature substance comprising several magnetic particles movable in a second liquid medium (photocurable resin). Final Act. 2 (citing Yin, Fig. la; 4- 5). The Examiner acknowledges that Yin does not disclose a plurality of microcapsules in a first medium containing the feature substance. Id. The Examiner finds that Schneider discloses a similar feature substance with several magnetic particles in a second liquid medium encapsulated in microcapsules in a first liquid medium (printing ink). Id. at 3^1 (citing Schneider ^ 21). The Examiner asserts that Schneider’s feature substance may also contain a wall encapsulating the microcapsule and the second medium. Id. at 4 (citing Schneider ^ 15). The Examiner concludes that it would have been obvious to provide Yin’s feature substance in 2 Appeal 2017-000034 Application 13/377,276 microcapsules in ink in view of Schneider, so that the feature substance may be printed into patterns on a document. Id. (citing Schneider, ^ 21). Appellants contend that Yin and Schneider, either alone or in combination, fail to disclose or suggest “within the liquid medium of each of the microcapsules, several magnetic particles are distributed,” as claimed. Appeal Br. 11. The Examiner responds by providing the following annotated version of Figure la of Yin: See Ans. 6. Annotated Figure la of Yin, reproduced above, is a schematic illustration of a mechanism for generating multiple structural colors with a single material. Yin ^ 11. It appears from the above annotations that the Examiner determines that applying the teachings of Schneider to the mechanism of Yin would result in encapsulation of several magnetic particles. See Ans. 6. 3 Appeal 2017-000034 Application 13/377,276 The Examiner’s finding that Schneider teaches encapsulation of several particles is based on the findings that Schneider discloses using printing ink as disclosed in paragraph 21, and encapsulation as shown in Figure 1. See Final Act. 2-3. However, Schneider merely discloses that “the individual particles can be used for example simply as pigments of a ‘printing ink,’ i.e. an optically changeable material is produced that can be processed like a printing ink.” Schneider 21. Furthermore, Schneider’s Figure 1 shows a single electrically charged particle in a microcapsule created by a binder or swelling agent. Id. at Fig. 1; ^ 58. Schneider uses a process in which the “microcapsules [are] brought into a swollen state by a swelling agent so that the particles are supported movably within the microcapsules.” Id. at 14. Schneider discloses that “[subsequent swelling has the consequence that the particles are now exposed in a cavity, i.e., in their own microcapsule.” Id. at]f 15. Accordingly, Schneider’s Figure 1 shows a single particle enclosed within a “microcapsule,” in which the “microcapsule” comprises a cavity (created by a swollen state of a swelling agent) such that the single particle can move within the cavity. See id. at ]fl[ 14-15. It is unclear how such a “microcapsule” created by Schneider’s swelling agent, and a combination of a printing ink and particles, can be added to Yin’s liquid medium (photocurable resin) in order to create microcapsules enclosing several magnetic particles within each microcapsule. At best, it appears that adding Schneider’s binder or swelling agent to Yin’s mechanism would result in an individual particle enclosed within a microcapsule. The Examiner does not sufficiently explain how Schneider’s teaching of creating a microcapsule, via creating a cavity by 4 Appeal 2017-000034 Application 13/377,276 way of a swelling agent enclosing a single magnetic particle, can be applied to the liquid medium of Yin, and be able to create a microcapsule around several magnetic particles as required by claim 31. See Appeal Br. 19 (Claims App.) Accordingly, even if Yin were modified in the manner proposed by the Examiner, the resulting combination would not meet the limitation requiring that “within the liquid medium of each of the microcapsules, several magnetic particles” as claimed. See id. For this reason, we do not sustain the Examiner’s decision rejecting claims 31 and 46, and claims 32- 33, 35^12, 44, 45, 47, and 48 which depend therefrom. DECISION The Examiner’s rejection of claims 31-33, 35—42, and 44-48 is REVERSED. REVERSED 5 Copy with citationCopy as parenthetical citation