Ex Parte Mathys

Patent Trial and Appeal Board

Mar 27, 2013

11222468 (P.T.A.B. Mar. 27, 2013)

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.
11/222,468 09/08/2005 Laurent Mathys 1322.1122102 6633
28075 7590 03/28/2013
SEAGER, TUFTE & WICKHEM, LLC
1221 NICOLLET AVENUE
SUITE 800
MINNEAPOLIS, MN 55403-2420
EXAMINER
LEWIS, JUSTIN V
ART UNIT PAPER NUMBER
3725
MAIL DATE DELIVERY MODE
03/28/2013 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 LAURENT MATHYS
________________

Appeal 2010-005894
Application 11/222,468
Technology Center 3700
________________

Before STEVEN D.A. McCARTHY, ANNETTE R. REIMERS and
CARL M. DeFRANCO, Administrative Patent Judges.

McCARTHY, Administrative Patent Judge.

DECISION ON APPEAL

STATEMENT OF THE CASE 1
The Appellant1 appeals under 35 U.S.C. § 134 from the Examiner’s 2
final decision rejecting claims 1-14 and 17. On page 2 of the Answer, the 3
Examiner objects to claim 15 as being dependent on a rejected base claim. 4
Claim 16 is cancelled. We have jurisdiction under 35 U.S.C. § 6(b). 5

1 The Appellant identifies the real party in interest as KBA-Giori, S.A.
of Lausanne, Switzerland.
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2
We sustain the rejection of: 1
claims 1-3, 7-9 and 13 under 35 U.S.C. § 102(b) as being 2
anticipated by Howland (US 6,089,614, issued Jul. 18, 2000); 3
claim 4 under 35 U.S.C. § 103(a) as being unpatentable 4
over Howland and Tsuchiya (US 5,375,886, issued Dec. 27, 5
1994); 6
claim 5 under § 103(a) as being unpatentable over 7
Howland and Brooks (US 6,406,062 B1, issued Jun. 18, 2002); 8
claim 6 under § 103(a) as being unpatentable over 9
Howland and Long (US 6,865,001 B2, issued Mar. 8, 2005); 10
and 11
claims 14 and 17 under § 103(a) as being unpatentable 12
over Howland and Bolash (US 6,450,607 B1, issued Sep. 17, 13
2002). 14
We do not sustain the rejection of: 15
claims 10-12 under § 103(a) as being unpatentable over 16
Howland and Mancuso (US 4,968,064, issued Nov. 6, 1990). 17
Claims 1, 10 and 13 are independent. Claim 1 recites: 18
19
1. A control element for a printed article, 20
in particular for securities or the like, having a first 21
drawing printed on a first side of said article, 22
comprising at least a first set of geometrical shapes 23
comprising lines or a screen, which control 24
element comprises 25
a second drawing printed on a second side of 26
said article, the second drawing being printed so as 27
to face the first drawing and be in register with the 28
latter, 29
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said second drawing comprising at least a 1
second set of geometrical shapes comprising lines 2
or a screen, and corresponding to the first set of 3
geometrical shapes, and 4
wherein at least one of said sets of 5
geometrical shapes includes offset sectors which 6
are offset so that, when a front side/reverse side 7
register is correct, the control element has regions 8
of variable density which become visible in 9
transmitted light and are created by said offset 10
sectors, 11
said offset sectors being offset by an amount 12
such that the offset sectors are substantially 13
invisible to the naked eye when viewed in reflected 14
light. 15
16
ISSUES 17
The Appellant argues the rejection of claims 1-3 and 7-9 as a group. 18
(See App. Br. 9-11). Claim 1 is representative of the group. The Appellant 19
argues the rejection of claim 13 separately. (See App. Br. 11-13; Reply Br. 20
2-3). In addition, the Appellant argues the rejection of parent independent 21
claim 10 and dependents claims 11 and 12 as a separate group. (See App. 22
Br. 13-15; Reply Br. 3-5). 23
Only issues and findings of fact contested by the Appellant have been 24
considered. See Ex parte Frye, 94 USPQ2d 1072, 1075-76 (BPAI 2010). 25
Three issues are dispositive of this appeal: 26
First, does Howland describe a control element for a 27
printed article having a set of geometrical shapes including 28
offset sectors “offset by an amount such that the offset sectors 29
are substantially invisible to the naked eye when viewed in 30
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4
reflected light” as recited in representative claim 1? (See App. 1
Br. 10-11). 2
Second, does Howland describe a process for checking a 3
front side/reverse side register of a printing machine including 4
the step of “determining that the front side/reverse side register 5
is correct or incorrect when said offset sectors are respectively 6
hidden by or visible between the geometrical shapes of the first 7
set” of geometrical shapes as recited in claim 13? (See App. 8
Br. 11-12). 9
Third, do the evidence and technical reasoning 10
underlying the rejection of representative claim 10 adequately 11
support the conclusion that a control element for a printed 12
article having first and second sets of geometrical shapes 13
including offset sectors such that “said [offset] sectors of the 14
first set of geometrical shapes [are] offset along a direction 15
which is opposite to the direction along which the [offset] 16
sectors of the second set of geometrical shapes are offset” 17
would have been obvious? (See Reply Br. 5). 18
19
FINDINGS OF FACT 20
The record supports the following findings of fact (“FF”) by a 21
preponderance of the evidence. 22
1. We adopt and incorporate by reference the Examiner’s findings 23
at page 4, line 3 of the Answer (starting with “Regarding claim 1 . . .”) 24
through page 6, line 15 of the Answer (ending with “. . . the geometrical 25
shapes of the first set (see fig. 7C).”); page 10, lines 14-16 of the Answer 26
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(“Howland, col. 10, lines 30-31 teaches the concept of forming lines 200 1
micrometers wide and separated by a distance of 100 micrometers.”). 2
3
Howland 4
2. Howland describes a bank note 1 including a see-through 5
security device 5 located in an area 3 of the bank note 1 more transparent 6
than surrounding area of the bank note. (Howland, col. 6, ll. 33-37 and 40-7
41). 8
3. The see-through security device 5 of Howland’s bank note 1 as 9
depicted in Figure 3 includes a first indicia 7 printed on an upper surface 10
(e.g., obverse surface) of the bank note 1 and a second indicia 9 printed on 11
an under surface (e.g., reverse surface) of the bank note. (Howland, col. 6, l. 12
47 – col. 7, l. 4 (describing embodiments depicted in Figures 2 and 3 of 13
Howland)). 14
4. The see-through security device 5 of Howland’s bank note 1 as 15
depicted in Figure 3 also includes an iridescent patch 10 printed between the 16
upper surface of the bank note 1 and the first indicia 7. The iridescent patch 17
10 obscures the second indicia 9 so that one sees only the first indicia 7 18
when one inspects the upper surface of the bank note 1 in reflected light. 19
(Howland, col. 6, l. 66 – col. 7, l. 4). 20
5. The iridescent patch 10 of Howland’s see-through security 21
device 5 as depicted in Figure 3 is sufficiently thin to permit both the first 22
and second indicia 7, 9 to be seen at the same time when the bank note 1 is 23
viewed in transmitted light. (See Howland, col. 6, ll. 60-63 (describing a 24
common feature of the embodiment depicted in Figure 2 of Howland)). 25
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6. Figures 5-9 of Howland provide additional details concerning 1
the structure of the embodiment of the bank note 1 depicted in Figure 3. 2
(See Howland, col. 8, ll. 25-30 and 54-59). 3
7. The see-through security device 5 as depicted in Figures 3 and 4
7A-7C of Howland includes first and second indicia 7, 9 formed from sets of 5
substantially parallel lines. These lines include discontinuities 16, 17. 6
When the first and second indicia 7, 9 are viewed together in transmitted 7
light, “the discontinuities cause reinforcement of the corresponding lines in 8
the other indicia[,] the area of reinforcement forming the image 13.” 9
(Howland, col. 8, ll. 57-59). 10
8. Without relying on any scale of measurement, one may observe 11
that the discontinuities 16, 17 depicted in Figures 7A-7C of Howland do not 12
extend past the adjacent lines of the respective set of parallel lines appearing 13
in those drawing figures. 14
9. Howland describes first and second indicia 20, 21 including 15
parallel lines with offset. The parallel lines are 200 µm wide and separated 16
by distances of 100 µm. Howland describes the lines of the second indicia 17
21 as having an offset in relation to the lines of the first indicia 20 of 18
100 µm. (Howland, col. 10, ll. 30-32 and 41-44). The Appellant does not 19
appear to contest this finding. 20
21
Mancuso 22
10. Mancuso describes “an improved multicolored print which 23
includes a number of contrasting regions that readily change color with the 24
viewing angle.” (Mancuso, col. 1, ll. 62-65). 25
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11. Mancuso’s multicolored print 10 includes a “cloud” 12 defined 1
in part by local image regions 14, 16, 18. Each local image region 14, 16, 18 2
has lines established by periodic grooves 22, 24, 26 formed in a substrate 27. 3
The lines in different local image regions 14, 16, 18 extend in different 4
directions. (Mancuso, col. 4, ll. 28-40). 5
6
ANALYSIS 7
First Issue 8
The Examiner finds that Howland describes a control element for a 9
printed article having a set of geometrical shapes including offset sectors 10
“offset by an amount such that the offset sectors are substantially invisible to 11
the naked eye when viewed in reflected light” as recited in representative 12
claim 1. (See FF 1). The Appellant disagrees. (See App. Br. 10-11). 13
The Examiner finds that Howland teaches a control element as 14
depicted in Figures 3 and 7A-7C having first and second indicia consisting 15
of parallel lines with offset sectors. (See FF 1 and 7).2 The Examiner 16
additionally finds that the parallel lines of the first and second indicia have 17
thicknesses of 200 µm and are separated by distances of 100 µm. (See FF 1 18
and 9). The offset sectors 16, 17 depicted in Figures 7A and 7B of Howland 19
do not extend past the adjacent lines of the respective set of parallel lines 20
appearing in those drawing figures. (FF 8). Therefore, the Examiner has a 21
sound basis for belief that the offsets of the offset sectors appearing in 22

2 Since the Examiner finds that the embodiment depicted in Figures 7A-
7C of Howland anticipates claim 1 (see FF 1) and since Howland describes
Figures 7A-7C as providing additional detail regarding the embodiment
depicted in Figure 3 (FF 6), we need not address in detail the Appellant’s
argument on pages 9-10 of the Appeal Brief directed to the embodiment
depicted in Figure 4 of Howland.
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Figures 7A and 7B of Howland are offset no more than an imperceptible 1
distance on the order of 100 µm. 2
This sound basis for belief shifts to the Appellant the burden of 3
producing evidence to rebut the belief. See In re Best, 562 F.2d 1252, 1255 4
(CCPA 1977). The Appellant offers no evidence suggesting that Howland’s 5
offset sectors 16, 17 are not offset by an amount such that the offset sectors 6
would be substantially invisible to the naked eye when viewed in reflected 7
light. Therefore, the Examiner correctly found that Howland describes each 8
and every limitation of representative claim 1 in the same arrangement as in 9
the claim. We sustain the rejection of claims 1-3 and 7-9 under § 102(b) as 10
being anticipated by Howland. 11
The Appellant argues the rejection of claim 4; the rejection of claim 5; 12
and the rejection of claim 6 solely with reference to the arguments directed 13
against the rejection of parent claim 1. (App. Br. 15-16). We sustain the 14
rejection of claim 4 under § 103(a) as being unpatentable over Howland and 15
Tsuchiya; the rejection of claim 5 under § 103(a) as being unpatentable over 16
Howland and Brooks; and the rejection of claim 6 under § 103(a) as being 17
unpatentable over Howland and Long. 18
19
Second Issue 20
Claim 13 recites a process for checking a front side/reverse side 21
register of a printing machine including the step of “determining that the 22
front side/reverse side register is correct or incorrect when said offset sectors 23
are respectively hidden by or visible between the geometrical shapes of the 24
first set” of geometrical shapes. Howland teaches that the offset sectors or 25
discontinuities 16, 17 of the first and second indicia 7, 9 depicted in Figures 26
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7a and 7B, when “viewed in transmission, . . . cause reinforcement of the 1
corresponding lines in the other indicia.” (FF 7). In other words, the first 2
and second indicia 7, 9 permit one to determine that the front side/reverse 3
side register is correct when the offset sectors or discontinuities 16, 17 are 4
visible between the geometrical shapes (that is, parallel lines) of the first 5
indicia 7. The Appellant argues that Howland fails to anticipate claim 13 6
because claim 13 is limited to a process in which no visible effect is 7
produced in transmitted light if the front side/reverse side register is correct. 8
(App. Br. 12). 9
A claim under examination is given its broadest reasonable 10
interpretation consistent with the underlying specification. In re Am. Acad. 11
of Sci. Tech. Ctrs., 367 F.3d 1359, 1364 (Fed. Cir. 2004). The placement of 12
the term “respectively” in the limitation “determining that the front 13
side/reverse side register is correct or incorrect when said offset sectors are 14
respectively hidden by or visible between the geometrical shapes of the first 15
set” is such that the term reasonably may be read as modifying the term 16
“offset sectors.” One common meaning of the term “respectively” is 17
synonymous with the adverb “separately.” (Dictionary, http://www 18
.merriam-webster.com/dictionary/respectively (last visited March 26, 19
2013)(def. 1)). Taking into account the alternative language in which the 20
limitation is recited, the limitation is sufficiently broad to encompass a step 21
of determining that the front side/reverse side register is correct when each 22
offset sectors is separately visible between the geometrical shapes of the first 23
set. This reading is consistent with the embodiments of the Appellant’s 24
Figures 1A-1D and 2A-2D. (See Spec. 6, ll. 7-20; 8, ll. 18-34; and figs. 1A-25
1D and 2A-2D). 26
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Therefore, Howland describes a process including the step of 1
“determining that the front side/reverse side register is correct or incorrect 2
when said offset sectors are respectively hidden by or visible between the 3
geometrical shapes of the first set” of geometrical shapes as recited in claim 4
13 when that limitation is properly construed. We sustain the rejection of 5
claim 13 under § 102(b) as being anticipated by Howland. Since the 6
Appellant argues the rejection of claims 14 and 17 solely with reference to 7
the arguments directed against the rejection of parent claim 13 (App. Br. 16), 8
we sustain the rejection of claims 14 and 17 under § 103(a) as being 9
unpatentable over Howland and Bolash. 10
Third Issue 11
The Examiner appears to find that Howland describes each element 12
recited in representative claim 10 except that whereby “said [offset] sectors 13
of the first set of geometrical shapes [are] offset along a direction which is 14
opposite to the direction along which the [offset] sectors of the second set of 15
geometrical shapes are offset.” (See Ans. 7-8). The Examiner finds that 16
Mancuso discloses the latter limitation. (Ans. 8). Even assuming for 17
purposes of this appeal only that these findings are correct, the Appellant 18
correctly points out that the Examiner has not identified a reason why one of 19
ordinary skill in the art might have combined the teachings of Howland and 20
Mancuso in the fashion claimed in claim 10. (See Reply Br. 5). Therefore, 21
we do not sustain the rejection of claims 10-12 under § 103(a) as being 22
unpatentable over Howland and Mancuso. 23
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DECISION 1
We AFFIRM the Examiner’s decision rejecting claims 1-9, 13, 14 and 2
17. 3
We REVERSE the Examiner’s decision rejecting claims 10-12. 4
No time period for taking any subsequent action in connection with 5
this appeal may be extended under 37 C.F.R. § 1.136(a)(1)(iv)(2009). 6
7
AFFIRMED-IN-PART 8
9
10
Klh 11