Ex Parte Knipp et al

Patent Trial and Appeal Board

May 22, 2018

14175446 (P.T.A.B. May. 22, 2018)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE FIRST NAMED INVENTOR
14/175,446 02/07/2014 Roman Thomas KNIPP
52835 7590 05/24/2018
HAMRE, SCHUMANN, MUELLER & LARSON, P.C.
45 South Seventh Street
Suite 2700
MINNEAPOLIS, MN 55402-1683
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
ATTORNEY DOCKET NO. CONFIRMATION NO.
02968.0508US01 3929
EXAMINER
POWERS, LAURA C
ART UNIT PAPER NUMBER
1785
NOTIFICATION DATE DELIVERY MODE
05/24/2018 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):
PTOMail@hsml.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE
THE PATENT TRIAL AND APPEAL BOARD
Ex parte ROMAN THOMAS KNIPP 1
and Peter Daniel Schmidt
Appeal2017-008978
Application 14/175,446
Technology Center 1700
Before MARK NAGUMO, CHRISTOPHER C. KENNEDY, and
LILAN REN, Administrative Patent Judges.
NAGUMO, Administrative Patent Judge.
DECISION ON APPEAL
Entrust Datacard Corporation ("Knipp") timely appeals
under 35 U.S.C. § 134(a) from the Final Rejection2 of all pending claims 1-
3, 5-8, 11, and 21-23. We have jurisdiction. 35 U.S.C. § 6. We reverse.
1 The applicant under 3 7 C.F .R. § 1.46, and hence the appellant under
35 U.S.C. § 134, is the real party in interest, identified as Entrust Datacard
Corporation, formerly known as Datacard Corporation. (Appeal Brief,
filed 19 January 2017 ("Br."), 2.)
2 Office Action mailed 4 August 4 2016 ("Final Rejection"; cited as "FR").
Appeal2017-008978
Application 14/175,446
A. Introduction 3
OPINION
The subject matter on appeal relates "to a barrier coating to reduce
colorant migration or other degradation for information printed on a
substrate" (Spec. 1, 11. 3--4) due to an overlying adhesive layer.
The presence of such a barrier layer is also said to "allow for a wider
selection of adhesives to be used for the protective layer." (Id. at 11. 27-28.)
The structure of a card (e.g., an identification card such as a driver's
license) according to the claimed invention 200
is illustrated in Figure 2, right. Card 2004
comprises substrate 205, printed data 210,
barrier layer 110, adhesive layer 215,
optional security layer 220, and protective
layer 225. (Spec. 8, 11. 18-24.) The
Specification explains that "[a] layer can
include a continuous layer as well as a
non-continuous layer." (Id. at 11. 24--25.)
215
{Figure 2 shows a side view diagram of a card 200 with a barrier
coating 110 separating printed indicia 210 from adhesive layer 215}
3 Application 14/175,446, Barrier coating for a substrate,
filed 7 February 2014. We refer to the "'446 Specification," which we cite
as "Spec."
4 Throughout this Opinion, for clarity, labels to elements are presented in
bold font, regardless of their presentation in the original document.
2
Appeal2017-008978
Application 14/175,446
Claim 1 is representative and reads:
A card or passport, comprising:
a card or passport substrate;
printed data on a surface of the card or passport substrate,
wherein the printed data is produced using one of a dye
and a pigment;
a barrier coating;
an adhesive layer comprising a thermoplastic with a glass
transition temperature lower than about 150°C, wherein
a portion of the barrier coating is disposed between
a portion of the printed data and
a portion of the adhesive layer,
wherein the barrier coating prevents the adhesive layer
from contacting the printed data on the card or
passport substrate; and
a protective layer, wherein
the portion of the adhesive layer is disposed between
a portion of the protective layer and
a portion of the card or passport substrate.
(Claims App., Br. 16; some indentation, paragraphing, and emphasis added.)
Remaining independent claim 21 is similar.
3
Appeal2017-008978
Application 14/175,446
The Examiner maintains the following ground of rejection5' 6, 7 :
Claims 1, 2, 3, 5-8, 11, and 21-23 stand rejected under
35 U.S.C. § 103(a) in view of the combined teachings of Jones, 8
Forrest, 9 Tooley, 10 and Anderson. 11
5 Examiner's Answer mailed 10 April 2017 ("Ans.").
6 Because this application was filed after the 16 March 2013, effective date
of the America Invents Act, we refer to the AIA version of the statute.
7 A rejection of claim 1 and the corresponding dependent claims for lack of
adequate written description under 35 U.S.C. § 112(1) has been withdrawn.
(Ans. 9.)
8 Robert L. Jones and Hannah J. Moore, Identification document with
integrated circuit and antenna in a layers document structure, U.S. Patent
No. 7 ,278,580 B2 (2007).
9 Forrest, Rubber Analysis -Polymers, Compounds and Products: (Report
No. 139), Volume 12 - Appendix 3: Glass Transition Temperatures of
Rubbers, in Smithers Rapra Technology, page 51 (2001; online version
available at: http:// app .knovel. com/hotlink/pdf/id:kt0098ZGO1 /rubber-
analysis-po lymers/ glass-transition-temperatures.
10 Tooley, Design Engineering Manual - 11.1.4.1 Glass Transition
Temperatures; pg. 496-497, Table 11.1.7, 2010, Elsevier). Online version
available at: http://app.knovel.com/hotlink/pdf/id:kt008U9DO 1/design-
engineering-manual/ glass-transition-temperatures)
11 Ralph L. Anderson, Moisture-resistant polyurethane-based pressure-
sensitive adhesives, U.S. Patent No. 4,049,601 (1977).
4
Appeal2017-008978
Application 14/175,446
The Examiner enters the following new grounds of rejection 12 :
B. Claims 1 and 21 stand rejected under 35 U.S.C. § 102(a)(l)
in view of Sheptak13 and Crompton. 14
C. Claims 1 and 21 stand rejected under 35 U.S.C. § 102(a)(l)
in view of Herslow15 and Tooley.
12 Ans. 6-9.
13 Nicholas Sheptak, Multi-ply laminate and identification card, U.S. Patent
No. 4.429,015 (1984).
14 Crompton (Crompton, T.R. (2012) Physical Testing of Plastics -2.13
Glass Transition Temperature, pg. 164. Smithers Rapra Technology. Online
version available at:
http:// app .knovel. com/hotlink/pdf/id:ktOOTY02J 1 /physical-testing-
plastics/ glass-transition-temperature)
15 John H. Herslow, Laser markable secure documents, U.S. Patent
Application Publication 2006/0251869 Al (2006).
5
Appeal2017-008978
Application 14/175,446
B. Discussion
The Board's findings of fact throughout this Opinion are supported by
a preponderance of the evidence of record.
Obviousness: Jones and Anderson
The Examiner finds that Jones describes an identification card,
illustrated in Figure 1, reproduced below that meets claim 1 but for,
36--..--.
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12---
- ~~'S~'%~~,~~~~'S--~~~'§.~~~~~~~~~~~~~'%~~"%';."%~~~~~'..~~~~,~~~-§i.~~"'~
34 ~-;_;.,;::::;:;:::::::;:··-: _ . .,::-:.--:---.::-: c• c·•c.·-..· _-._--,- ·: ~ u - .,.._ - .;::t- 30
- ---
!6
{Jones Figure 1 shows a cross-sectional diagram of an identification card.}
inter alia, the required barrier layer. (FR 6, i-f 7.) The card comprises core
layer 12 and bottom layer 14, both of which are formed from an opaque
white polyolefin, and which are printed on one side with fixed indicia 16
(pale gray). The printed indicia 16 on both layers are laminated to clear
polymer layers 30 by an adhesive layer 32 (dark gray). [An image-receiving
layer 34 is provided on the side of polymer layers 30 opposite to the
adhesive layer; after an image is formed on layer 34, protective layer 36 is
6
Appeal2017-008978
Application 14/175,446
applied "to protect the variable indicia and prevent bleeding of dye from the
image receiving layers 34." (Jones col. 6, 11. 32-36.)]
The Examiner finds that Anderson describes a moisture-resistant
polyurethane-based [pressure-sensitive] adhesive, and further, "the use of a
barrier layer to prevent the migration of adhesive." (FR 6, i-f 7.) Because
both Jones and Anderson teach the use of polyurethane adhesives, the
Examiner concludes that it would have been obvious "to utilize the barrier
coating taught by Anderson in the identification card taught by Jones et al.
between [] a portion of the adhesive layer and a portion of the fixed indicia,
to prevent the migration of adhesive." (Id.)
Knipp urges the Examiner erred harmfully because there is
insufficient teaching in Anderson to suggest adding a barrier layer between
the fixed indicia 16 and the adhesive layer 32 in the identification card
described by Jones. (Br. 5, last para.) Anderson does not, Knipp argues,
explain what the term "migration of the adhesive" means, or in what
direction the migration of the adhesive is to be prevented. (Id.) Anderson
could mean, Knipp suggests, preventing migration into the polymer layer 30
by providing the barrier coating between adhesive layer 32 and polymer
layer 30, or preventing [lateral] migration of adhesive layer 32 by applying a
barrier layer to the [lateral] sides of adhesive layer 32. (Id.) Moreover, in
Knipp's view, "Jones does not disclose, nor does it contemplate, the use of a
barrier coating to prevent the adhesive layer 32 from contacting the fixed
indicia 16." (Id. at 7 .)
The weight of the evidence supports Knipp. Anderson describes
adhesive tapes prepared by applying pressure-sensitive adhesives to a
7
Appeal2017-008978
Application 14/175,446
backing material such as polyurethane-impregnated paper. (Anderson,
col. 1, Example 1.) Anderson teaches that the backing materials can be
provided with well-known release coatings on one side, and with anchor or
tie-coatings on the other side (to be coated with adhesive). (Id. at col. 4,
11. 30-38.) "If barrier coatings are needed," Anderson instructs, "for
example to prevent migration of adhesive and backing components, there
can be used 0.3 to 0.4 mil coatings of cross-linking acrylic copolymer .... "
(Id. at 11. 44--48.) In this context, although Anderson teaches clearly the
desirability of providing barrier coatings between the backing material and
the adhesive, and possibly between the backing material and the release
coating, it can be said further, at most, that Anderson does not teach away
from using barrier coatings anywhere else.
The Examiner has not directed our attention to any teaching in Jones
that would have suggested providing a barrier layer between the printed
indicia (whether fixed (16) or variable (34)) and an adhesive layer. Indeed,
as Knipp points out, the adhesive layers are affixed directly to the fixed
indicia layers 16.
These considerations suffice to confirm that the Examiner erred
harmfully in arriving at the conclusion of prima facie obviousness in view of
the combined teachings of Jones and Anderson.
The Examiner relies on Forrest and Tooley as evidence of the inherent
glass transition temperatures of various polymers. In view of the harmful
errors already established, we need not and do not decide the merits of the
respective arguments regarding the disclosure of various glass transition
temperatures for polymers by Forrest and by Tooley.
8
Appeal2017-008978
Application 14/175,446
Anticipation
As our reviewing court has stated many times, "[i]t is axiomatic that
for anticipation, each and every claim limitation must be explicitly or
inherently disclosed in the prior art." In re NTP, Inc., 654 F.3d 1279, 1302
(Fed. Cir. 2011). It has long been settled that "[i]nherency ... may not be
established by probabilities or possibilities. The mere fact that a certain
thing may result from a given set of circumstances is not sufficient." In re
Oelrich, 666 F.2d 578, 581(CCPA1981), quoting Hansgirg v. Kemmer,
102 F.2d212, 214(CCPA1939).
Sheptak
Knipp urges (Reply 16 2) that the Examiner erred harmfully in
determining that "the printed indicia (printed data) of the identification card
taught by Sheptak implies an ink (col. 3 Ln. 5-30[)], and all inks have either
pigments or dyes." (Ans. 7, i-f 13, last sentence.) As Knipp points out,
providing supporting prior art evidence, it is well known that "printed
indicia" can be produced in many ways without using a pigment or ink.
We therefore reverse the rejection for anticipation in view of Sheptak.
Hers low
The Examiner finds that Herslow discloses, in Figure 3 (reproduced
on the following page) a laser markable document comprising a core
layer 10 with data printed with printing ink, "a buffer layer (22al, barrier
layer) formed over the printed data, a clear polycarbonate layer (12a,
adhesive) attached/bonded to the buffer layer on one surface and a clear
16 Reply Brief filed 6 June 2017 ("Reply").
9
Appeal2017-008978
Application 14/175,446
layer of PETG (22a2; protective layer) formed above the clear
polycarbonate layer (12a: adhesive)." (Ans. 6, i-f 16.)
{Herslow Figure 3 is shown below}
CL-6fR Pt/c_ I 'fc....,
ct8ll IL PeT