Ex Parte Lawandy

Patent Trial and Appeal Board

Jun 1, 2016

12220054 (P.T.A.B. Jun. 1, 2016)

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.
12/220,054 07/21/2008 Nabil M. Lawandy S095 P02454-US2 6028
3017 7590 06/01/2016
BARLOW, JOSEPHS & HOLMES, LTD.
101 DYER STREET
5TH FLOOR
PROVIDENCE, RI 02903
EXAMINER
GRABOWSKI, KYLE ROBERT
ART UNIT PAPER NUMBER
3725
MAIL DATE DELIVERY MODE
06/01/2016 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 NABIL M. LAWANDY
____________________

Appeal 2014-003507
Application 12/220,054
Technology Center 3700
____________________

Before CHARLES N. GREENHUT, MICHELLE R. OSINSKI, and
THOMAS F. SMEGAL, Administrative Patent Judges.

GREENHUT, Administrative Patent Judge.

DECISION ON APPEAL

STATEMENT OF CASE
Appellant appeals under 35 U.S.C. § 134 from a rejection of claims 1–
6 and 10–21. We have jurisdiction under 35 U.S.C. § 6(b).
We affirm.
The claims are directed to a system and methods for using
microscopic capsules containing orientable materials for document security.
Claim 1, reproduced below, is illustrative of the claimed subject matter:
1. A security feature for a banknote having a marking,
comprising:
a film comprising a polymeric material having a boundary
embedded in the banknote; and
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a medium disposed in the polymeric material, the medium
comprising flakes of magnetically orientable material and a
liquid in fluid communication with the boundary, the flakes of
magnetically orientable material in an unconcentrated first state
such that the marking is obscured by the film;
wherein, upon application of a magnetic field to the
medium, the flakes of magnetically orientable material migrate
to a concentrated second alignment state near the boundary such
that the marking is visible through the film.

REFERENCES
The prior art relied upon by the Examiner in rejecting the claims on
appeal is:
Takeuchi US 8,158,238 B2 Apr. 17. 2012
Nakano US 6,391,439 B2 May 21, 2002

REJECTION
Claims 1–6 and 10–21 are rejected under 35 U.S.C. § 112, first
paragraph, as failing to comply with the enablement requirement.1

OPINION
The Examiner found independent claims 1, 13, and 19, drawn to the
embodiment of Figures 3A and 3B, lacked enablement under 35 U.S.C.
§ 112, first paragraph. Final Act. 2. Even though 35 U.S.C. § 112, first
paragraph statute does not use the term “undue experimentation,” the statute
has been interpreted to require that the claimed invention be enabled so that

1 The Examiner indicated these claims would be allowable if rewritten to
overcome the § 112, second paragraph rejection. Final Act. 3. The
Examiner may have intended to refer to the § 112, first paragraph rejection
as no § 112, second paragraph rejection is before us for review. We leave it
to the Examiner to clarify this issue in any further prosecution.
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any person skilled in the art can make and use the invention without undue
experimentation. In re Wands, 858 F.2d 731, 737 (Fed. Cir. 1988). The
determination that “undue experimentation” would have been needed to
make and use the claimed invention is not a single, simple factual
determination. Rather, it is a conclusion that may be reached by weighing
the following factual considerations: (A) The breadth of the claims; (B) The
nature of the invention; (C) The state of the prior art; (D) The level of one of
ordinary skill; (E) The level of predictability in the art; (F) The amount of
direction provided by the inventor; (G) The existence of working examples;
and (H) The quantity of experimentation needed to make or use the
invention based on the content of the disclosure. In re Wands, 858 F.2d at
737.
Although the Examiner does not mention the Wands factors by name,
it is clear the Examiner has based the conclusion of lack of enablement on
several of these factors. The Examiner first discussed “the state of the prior
art”, citing Takeuchi and Nakano to support that it is well-known in the art
for flakes to orient with an applied magnetic field rather than being
“dragged.” Final Act. 2. Appellant attempts to distinguish these references
by noting that the flakes “cannot migrate as within the field and the
laminated plates cannot migrate as within the balls.” Br. 7–8. However,
Appellant has not explained why the magnetic flakes of Takeuchi and
Nakano cannot migrate within their respective microcapsules. And if the
magnetic flakes of Takeuchi and Nakano cannot migrate, Appellant has
failed to explain what is different about Appellant’s magnetic flakes which
allow them to perform this migration while those of the prior art are
prohibited (given that the magnetic flakes located within the microcapsules
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appear to be the same as Appellant’s magnetic flakes located within
microcapsules).
Appellant additionally restates language from the Specification
without further explanation, noting that flakes are “free to migrate against a
wall of the structure when a magnetic field is applied” and are “subject to
. . . attractive forces dragging the magnetic material.” Br. 8. However, these
remarks fail to address the Examiner’s rejection and do not explain how the
“dragging” occurs when the magnetic field is applied.
The Examiner also addressed “the amount of direction provided by
the inventor.” The Examiner found that it is unclear how the claimed flakes
would drag (or “migrate” as in the claims) to a concentrated state. Final Act.
3. The Specification and Appellant’s remarks fail to provide the necessary
direction for a person of ordinary skill in the art to achieve this migration or
dragging of the magnetic flakes. The Examiner further found that it is
unclear how, once dragged, the flakes would clarify viewing of the material.
Final Act. 3, 5. The Examiner found that as described in the Specification, a
concentration of flakes at the bottom of the microcapsule would seem to
obscure the material below the microcapsule. Final Act. 3.
We agree that it is unclear whether the migration of magnetic flakes
would operate to clarify or further occlude the material below the
microcapsule. The Specification provides a first embodiment, Figures 2A
and 2B, which appears to depict a line of sight opposite of the direction of
magnetic field H (see Spec., para. 17 discussing a view of material below
substrate 25), but does not specifically state a line of sight for the second
embodiment in Figures 3A and 3B. If a person of ordinary skill in the art
were to view Figure 3B in this same direction, it would appear, as the
Examiner suggests, that the concentration of flakes 15 located at the bottom
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of microcapsule 10 would further occlude the mark below. Absent further
direction from the inventor, a person of ordinary skill in the art would not
reasonably be expected to understand how this concentration of flakes allow
for the marking to be visible through the film. Therefore, the amount of
direction provided in the Specification does not clarify the claim language or
clear up the confusion as to how the migrated flakes allow for the mark to be
visible through the film.
Appellants’ remarks also do not clarify the claims. Appellants merely
state that “the magnetic flakes in the particle are attracted to the magnetic
field thereby clearing them to the boundary of the capsule on a ‘pixel by
pixel’ basis to allow a mark to be seen.” Br. 8. Again, this is language
borrowed from the Specification (see Spec., para. 16) without further
explanation as to what is meant by “pixel by pixel.”
The Examiner has the initial burden to establish a reasonable basis to
question the enablement provided for the claimed invention. In re Wright,
999 F.2d 1557, 1562 (Fed. Cir. 1993). We find that the Examiner has
provided a reasonable basis for finding the claims lack enablement and
Appellants have not sufficiently explained how a person of ordinary skill in
the art would have understood the magnetic flakes to “migrate” to a
concentrated state “such that the marking is visible through the film” based
on the disclosure. We therefore affirm the rejection of claims 1–6 and 10–
21.

DECISION
The Examiner’s rejection of claims 1–6 and 10–21 is affirmed.

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Application 12/220,054
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No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. § 1.136(a). See 37 C.F.R.
§ 1.136(a)(1)(iv).

AFFIRMED