Ex Parte Marchant et al

Patent Trial and Appeal Board

Aug 15, 2016

13376099 (P.T.A.B. Aug. 15, 2016)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE
13/376,099 12/02/2011
28827 7590 08/17/2016
GABLE & GOTW ALS
100 WEST FIFTH STREET, lOTH FLOOR
TULSA, OK 74103
FIRST NAMED INVENTOR
Simon Dexter Marchant
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.
006422-00048 6366
EXAMINER
GRABOWSKI, KYLE ROBERT
ART UNIT PAPER NUMBER
3725
NOTIFICATION DATE DELIVERY MODE
08/17/2016 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):
iplaw@gablelaw.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte SIMON DEXTER MARCHANT,
PAUL HOWLAND, and JANINA MOREKE
Appeal 2014-007 665
Application 13/376,099
Technology Center 3700
Before JENNIFER D. BAHR, JOHN C. KERINS, and
SEAN P. O'HANLON, Administrative Patent Judges.
BAHR, Administrative Patent Judge.
DECISION ON APPEAL
STATEMENT OF THE CASE
Simon Dexter Marchant et al. (Appellants) appeal under 35 U.S.C.
§ 134(a) from the Examiner's decision rejecting claims 1-27. We have
jurisdiction under 35 U.S.C. § 6(b ).
We AFFIRM-IN-PART.
Appeal2014-007665
Application 13/376,099
THE CLAIMED SUBJECT MATTER
Claim 1, reproduced below from page 18 of the Appeal Brief (Claims
Appendix), with pertinent limitations italicized for emphasis, is the only
independent claim pending in the application and is illustrative of the
claimed subject matter.
1. A security substrate, said substrate comprising:
an at least partially light transmitting carrier supporting a
security feature, said security feature comprising at least first and
second layers, at least one of said first and second layers
covering an area which is less than a full surface area of the
carrier and which at least partially overlaps the other layer,
wherein the layers have substantially the same colour and texture
and the reflective contrast ratio (expressed as a percentage) of
the overlapping areas and the non-overlapping areas is less than
20% and the transmissive contrast ratio (expressed as a
percentage) of the overlapping areas and the non-overlapping
areas is greater than 3% such at; [sic]
when the security substrate is viewed in reflected light, the
first and second layers are substantially indiscernible from each
other and have the appearance of a single homogenous area;
and
when the substrate is viewed in transmitted light, the first
and second layers are clearly distinguishable from each other.
REJECTIONS
I. Claims 1-6, 8-11, and 17-20 stand rejected under 35 U.S.C.
§ 102(b) as anticipated by Hoppe '899 (US 4,307,899, iss. Dec. 29,
1981 ).
II. Claims 1, 6, and 7 stand rejected under 35 U.S.C. § 102(b) as
anticipated by Hoppe '525 (US 4,407,525, iss. Oct. 4, 1983).
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III. Claims 9 and 12-16 stand rejected under 35 U.S.C. § 103(a) as
unpatentable over Hoppe '899 and Hardwick (US 6,4 71,248 B2,
iss. Oct. 29, 2002).
IV. Claims 1and21-27 stand rejected under 35 U.S.C. § 103(a) as
unpatentable over Mallol (US 2008/0030020 Al, pub. Feb. 7,
2008) and Hoppe '899.
V. Claims 1---6, 8-11, and 17-20 stand rejected under 35 U.S.C.
§ 103(a) as unpatentable over Hoppe '899.
DISCUSSION
Rejection I
The Examiner relies on the embodiment of Figures 2a and 2b of
Hoppe '899 as anticipating the subject matter of claim 1, with layers 7 and 8
corresponding to the claimed first and second layers. Final Act. 2; see also
Ans. 3 (noting that Figure 2a is relied on in the rejection and stating, "Any
analysis of Figure la-bis irrelevant to the rejection."). The Examiner finds
that Hoppe '899 discloses that monochromatic colors, such as all white ink,
can be used in the embodiment of Figure 2a. Ans. 3 (citing Hoppe '899, col.
2, 11. 57---64).
Appellants characterize the embodiment of Figures 2a and 2b of
Hoppe '899 as "a 'different color' embodiment."' Appeal Br. 8. Moreover,
Appellants argue that this "different color embodiment" exhibits gray
graduations ranging from light gray to dark gray, which "are clearly
distinguishable from one another." Id. at 8-9. Thus, Appellants contend
that the embodiment of Figures 2a and 2b of Hoppe '899 does not satisfy the
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requirement of "same-color layers [that are] indistinguishable from one
another in reflected light." Id. at 9.
In discussing the embodiment of Figures 2a and 2b in detail, Hoppe
'899 discloses layer 7 as "an oval print ... with a red color" and layer 8 as
"[a]nother thin white color layer ... printed over the entire surface and on
top of the red color layer." Hoppe '899, col. 4, 11. 36-42. According to
Hoppe '899, when viewed in transmitted light, area 11 (over layer 7) appears
red, and the remaining areas appear as varying shades of gray or white,
depending on the number of overlapped layers. Id., col. 4, 11. 45--49; Figs.
2a, 2b. When viewed in incident light, areas 10-12 "exhibit gray
graduations ranging from light gray to dark gray," depending on the number
of overlapping layers, and area 13 (the area over thick white layer 9) appears
white. Id., col. 4, 11. 49--52. Thus, in this contrasting color embodiment,
layers 7 and 8 are not the same color, and they are not substantially
indiscernible from each other with the appearance of a single homogenous
area when viewed in reflected (i.e., incident) light, as required in claim 1.
We agree with the Examiner that Hoppe '899 contemplates either
monochromatic (i.e., all white) or contrasting color layers in the embodiment
of Figures 2a and 2b. Specifically, Hoppe '899 discloses that "[i]mages of
contrasting color can ... be produced in transmitted light which appear to be
almost monochromatic when viewed in incident light. If all color coatings
are chosen to be white, however, the sole effect obtained will be a hallmark
with modulated pure gray graduations." Hoppe '899, col. 2, 11. 59--64. We
find that a person having ordinary skill in the art would have inferred from
this disclosure that the red color layer of the embodiment of Figures 2a and
2b could instead be a white layer, in which case the effect obtained in
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transmitted light would be modulated pure gray graduations and the effect
obtained in incident light would be the same as for the embodiment with the
red color layer (i.e., areas 10-12 exhibiting "gray graduations ranging from
light gray to dark gray," depending on the number of overlapping layers, and
area 13 appearing white). Id., col. 4, 11. 49--52; see also id. at col. 2, 11. 45-
54 (describing a graduation of gray halftone values achieved by
superimposing additional color coatings on one another so "as to overlap in
whole or in part," thereby producing "a light/shadow effect ... which has an
esthetic appearance in incident light and which reverses when viewed in
transmitted light."). Thus, this same color (i.e., all white) embodiment
would satisfy the "same colour" limitation of claim 1, but would not satisfy
the requirement in claim 1 that layers 7 and 8 be substantially indiscernible
from each other with the appearance of a single homogenous area when
viewed in reflected (i.e., incident) light.
The Examiner emphasizes that claim 1 requires that the layers be
substantially indiscernible from each other in reflected light, which,
according to the Examiner, "is also completely congruent with the limitation
in claim 1 'the reflective contrast ratio (expressed as a percentage) of the
overlapping areas and the non-overlapping areas is less than 20%."' Ans. 2.
To the extent that the Examiner's position is that the gray graduations
exhibited by the embodiment of Figures 2a and 2b of Hoppe '899 satisfy the
"substantially indiscernible" and reflective contrast ratio of less than 20%
limitations of claim 1, this position appears to be premised on an unduly
broad interpretation of claim 1 in light of the Specification.
Appellants' Specification describes "first and second layers 12, 13,"
when viewed in reflected light, as "substantially indiscernible with the
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appearance of only a single homogeneous area covering the total area
covered by both layers 12, 13 being visible." Spec. 6, 11. 2-5. According to
the Specification, "[t]he contrast ratio ... is a measure of the perceived
difference between the background (non-superimposed layers either 12 or
13) and the image area (superimposed layers 12 and 13) in the two viewing
modes." Id. at 9:11-14. The contrast ratios are determined based on
measurements "of Luminosity . . . using an Epson Perfection 2540 Photo
scanner." Id. at 8:9-9:10, 9:16-19. The Specification goes on to explain
that "[i]t is extremely difficult to obtain an exact correlation between the
observer assessment and the measured contrast values because the observer
is affected by variable ambient conditions and by print and design
elements." Id. at 9:21-24. Further, the Specification states, "[i]t has been
found that the limit of the transmission contrast ratio below which the image
cannot be seen is 3-5%. The upper limit of the reflectance contrast ratio
above which the image is not hidden in reflection is 8-20%." Id. at 10:8-11.
Thus, in light of the Specification, a person having ordinary skill in the art
would understand the "contrast ratio" ranges set forth in claim 1 to be based
on values of luminosity measured using an Epson Perfection 2540 Photo
scanner, and not based on an observer's perception. According to the
Specification, although the Epson Perfection 2540 Photo scanner might
perceive a difference between the non-imposed layers and the superimposed
layers in reflected light, an observer would not see any difference between
the superimposed layers and the non-superimposed layers when the
reflection contrast ratio is less than 8-20%. Both the scanner and an
observer would perceive a difference between the superimposed layers and
the non-superimposed layers in transmitted light when the transmittance
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contrast ratio is greater than 3-5%. As such, reading claim 1 as a whole, in
light of the underlying disclosure in Appellants' Specification, a person of
ordinary skill in the art would understand the "substantially indiscernible"
limitation of claim 1 as requiring that the areas of superimposed layers look
the same as the areas of non-superimposed layers, so as to have the
appearance of a single homogeneous area, to an observer viewing the
substrate in reflected light. Claim 1, properly construed, requires that the
first and second layers be substantially indiscernible from one another, with
the appearance of a single homogeneous layer, when viewed by an observer
in reflected light, and that the first and second layers be clearly
distinguishable by an observer when viewed in transmitted light.
The all white and contrasting color embodiments of Figures 2a and 2b
of Hoppe '899 described above do not satisfy the aforementioned
requirements of claim 1 because when visually inspected in incident (i.e.,
reflected) light, the superimposed layers appear brighter, or less dark, than
non-superimposed layers. Hoppe '899, col. 4, 11. 49-52; see also id., col. 4,
26-30; col. 5, 1. 33---col. 6, 1. 7 (claims 1-3).
The Examiner cites a passage of Hoppe '899 describing a "cover layer
render[ing] underlying layers ('hallmarks') 'almost invisible"' to support the
finding that Hoppe '899 discloses a substrate satisfying the reflective
contrast ratio called for in claim 1. Ans. 3 (citing Hoppe '899, col. 2, 11. 27-
33). The cited passage reads as follows:
In particular, when employing the inventive markings
outside of multilayered laminates, a final homogeneous color
layer is preferably provided which covers the entire printed layer
structure. Due to the homogeneous uppermost color layer, the
underlying hallmark area becomes almost invisible when viewed
by incident light.
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Hoppe '899, col. 2, 11. 27-33.
This passage is unavailing to show anticipation of the subject matter
of claim 1 because it is restricted, by its own terms, to embodiments "outside
of multilayered laminates," and, thus, appears to be directed to "non-
laminated monolayer information carriers," rather than the multilayer
laminates of Figures 2a and 2b. Id., col. 2, 1. 28; see also col. 5, 11. 14--15.
For the above reasons, the Examiner fails to establish, by a
preponderance of the evidence, that Hoppe '899 anticipates the subject
matter of claim 1. Accordingly, we do not sustain the rejection of claim 1 or
its dependent claims 2---6, 8-11, and 17-20 under 35 U.S.C. § 102(b) as
anticipated by Hoppe '899.
Rejection II
The aforementioned deficiencies in the Examiner's findings with
respect to Hoppe '899 fatally taint the Examiner's finding that Hoppe '525,
which incorporates by reference Hoppe '899, anticipates the subject matter
of claims 1, 6, and 7. See Final Act. 3 (stating that "the functionality of the
layers [in Hoppe '525] is the same as Hoppe '899 detailed above").
Accordingly, we do not sustain the rejection of claims 1, 6, and 7 under
35 U.S.C. § 102(b) as anticipated by Hoppe '525.
Re} ection III
In rejecting claims 9 and 12-16, the Examiner relies on Hardwick for
its teaching of using inks containing optically variable pigments and printed
magnetic ink. Final Act. 5. The Examiner determines that it would have
been obvious to provide such colored inks in the device of Hoppe '899 "to
enhance or add extra anti-counterfeiting security." Id. The Examiner does
not articulate any findings or reasoning that would remedy the
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aforementioned deficiency in Hoppe '899 vis-a-vis claim 1, from which
claims 9 and 12-16 depend. 1 Accordingly, we do not sustain the rejection of
claims 9 and 12-16 under 35 U.S.C. § 103(a) as unpatentable over Hoppe
'899 and Hardwick.
Rejection IV
In rejecting claims 1 and 21-27 as unpatentable over Mallol and
Hoppe '899, the Examiner determines that it would have been obvious to
replace the semi-transparent metal layers of Mallol with a white ink as
taught by Hoppe '899 "as a reasonable semi-transparent substitute, as any
materials are suitable" and "the purpose of the material is identical in both
Mallol ... and Hoppe ['899], to camouflage in reflection but allow viewing
in transmission." Final Act. 6. The aforementioned deficiencies in the
Examiner's findings with respect to Hoppe '899 appear to fatally taint the
Examiner's reasoning in this rejection. As Appellants point out, replacing
Mallol's metal, semi-reflecting coatings 7 and 9 with white ink layers as
taught by Hoppe '899 seemingly would destroy, or at least significantly
diminish, the semi-reflecting function of these layers for making the
underlying information vector undetectable in reflected light. See Appeal
Br. 16-17; Mallol, para. 8. Moreover, as Appellants also point out, the
proposed substitution would not result in the claimed invention because
Mallol's information vector (disclosed as "colored, or in a variant ... black
1 Hardwick discloses a structure in which portions of the underlying layer
(security device 20) are "barely visible or not visible at all depending upon
the opacity of' layers 13-15 in reflected light, and the entire underlying
layer is visible in transmitted light. Hardwick, col. 4, 1. 47---col. 5, 1. 5
(emphasis added). However, the Examiner's rejection does not propose to
incorporate this aspect of Hardwick's teachings into Hoppe '899.
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and white") would not be the same color as the white ink layers. Appeal Br.
16; Hardwick, para. 28; see also id., paras. 134--137 (explaining that when
printing is positive, the pattern reproduced by information vector 8 can be
colored; when printing is negative, information vector 8 may include a
colored background; and, in a variant, information vector 8 may be in black
and white).
For the above reasons, we do not sustain the rejection of claims 1 and
21-27 under 35 U.S.C. § 103(a) as unpatentable over Mallol and Hoppe
'899.
Rejection V
In rejecting claims 1---6, 8-11, and 17-20 under 35 U.S.C. § 103(a) as
unpatentable over Hoppe '899, the Examiner states as follows:
Although it is believed that one of ordinary skill in the art
would construe "almost monochromatic" /"almost invisible" in
reflection and "modulated gray graduations" to reasonably
represent less than 10% contrast in reflection and more than 5%
contrast in transmission, respectively. Furthermore, Hoppe
discloses that "this effect can be varied as desired by varying the
thickness or color density of the uppermost printed coating". It
would have been obvious to one of ordinary skill in the art at the
time the invention was made to provide a contrast in reflection
less than 10% and a contrast in transmission more than 5%, to
provide the desired situations above (becoming as close to
invisible and having the clearest graduations possible). The
claim would have been obvious because a particular known
technique was recognized as part of the ordinary capabilities of
one skilled in the art. This is reinforced by the present
application[']s admission that humans cannot see a contrast in
transmission below 3-5% and similarly cannot notice a contrast
("almost monochromatic") in reflection if above 8-20% contrast.
This is a teaching of inherency, as human sight was the same at
the time of Hoppe ['899] as the present application. If humans
see at these height levels, bringing the contrasts to the claimed
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values would be obvious to one of ordinary skill in order to
provide the conditions of "almost monochromatic/almost
invisible" and "gray graduations".
Final Act. 4--5.
Appellants do not identify any defect in the Examiner's reasoning or
present any argument as to why this reasoning would not cure the
aforementioned deficiency in Hoppe '899. Rather, Appellants merely
incorporate the arguments presented against the rejection of claim 1 as
anticipated by Hoppe '899 and contend that "Hoppe [']899 simply does not
disclose, teach, or suggest all of the requirements of ... Appellant[s'] claim
1 and claims 2---6, 8-11, and 17-20 which depend from claim 1." Appeal Br.
14.
Thus, Appellants do not apprise us of error in the Examiner's
conclusion that Hoppe '899 renders obvious the subject matter of claims 1-
6, 8-11, and 17-20. Accordingly, we sustain the rejection of claims 1-6, 8-
11; and 17-20 under 35 U.S.C. § 103(a) as unpatentable over Hoppe '899.
DECISION
The Examiner's decision rejecting claims 1---6, 8-11, and 17-20 under
35 U.S.C. § 102(b) as anticipated by Hoppe '899 is REVERSED.
The Examiner's decision rejecting claims 1, 6, and 7 under 35 U.S.C.
§ 102(b) as anticipated by Hoppe '525 is REVERSED.
The Examiner's decision rejecting claims 9 and 12-16 under
35 U.S.C. § 103(a) as unpatentable over Hoppe '899 and Hardwick is
REVERSED.
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The Examiner's decision rejecting claims 1 and 21-27 under
35 U.S.C. § 103(a) as unpatentable over Mallol and Hoppe '899 is
REVERSED.
The Examiner's decision rejecting claims 1---6, 8-11, and 17-20 under
35 U.S.C. § 103(a) as unpatentable over Hoppe '899 is AFFIRMED.
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)(l )(iv).
AFFIRMED-IN-PART
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