Ex Parte KNIPP et alDownload PDFPatent Trial and Appeal BoardMay 22, 201814175446 (P.T.A.B. May. 22, 2018) Copy Citation 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--..--. 14~' t=========================l-__ 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 PeTCopy with citationCopy as parenthetical citation