Ex Parte Munro et alDownload PDFPatent Trial and Appeal BoardSep 29, 201511325998 (P.T.A.B. Sep. 29, 2015) Copy Citation 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. 11/325,998 01/05/2006 Calum H. Munro 2093A1 1333 7590 09/29/2015 PPG Industries, Inc. Intellectual Property Department One PPG Place Pittsburgh, PA 15272 EXAMINER LEWIS, JUSTIN V ART UNIT PAPER NUMBER 3725 MAIL DATE DELIVERY MODE 09/29/2015 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 CALUM H. MUNRO, MARK D. MERRITT, and SEAN PURDY ____________ Appeal 2013-009847 Application 11/325,998 Technology Center 3700 ____________ Before ANNETTE R. REIMERS, BRANDON J. WARNER, and AMANDA F. WIEKER, Administrative Patent Judges. WARNER, Administrative Patent Judge. DECISION ON APPEAL STATEMENT OF THE CASE Calum H. Munro et al. (“Appellants”)1 appeal under 35 U.S.C. § 134(a) from the Examiner’s decision rejecting claims 1–3, 5, 7, 8, and 10–15. Appeal Br. 1, 5. Claims 4, 6, 9, 16–18, 22, and 26 have been canceled, and claims 19–21, 23–25, and 27–36 have been withdrawn. Id. at 5. We have jurisdiction over the appeal under 35 U.S.C. § 6(b). We REVERSE. 1 According to Appellants, the real party in interest is PPG Industries Ohio, Inc. Appeal Br. 3. Appeal 2013-009847 Application 11/325,998 2 CLAIMED SUBJECT MATTER Appellants’ disclosed invention “relates to watermarks produced from radiation diffractive materials and to their use as security devices,” including methods of producing a watermark. Spec. ¶ 1. Claim 1, reproduced below with emphasis added, is the sole independent claim appealed and is representative of the subject matter on appeal. 1. A method of marking an article with a radiation watermark comprising: applying an ordered periodic array of particles to an article in a configuration that marks the article, wherein the array diffracts radiation, such that radiation is reflected from the configuration as a radiation watermark at a detectable wavelength. EVIDENCE The Examiner relied on the following evidence in rejecting the claims on appeal: Munro US 2003/0125416 A1 July 3, 2003 Lawandy US 7,184,569 B2 Feb. 27, 2007 Heim US 7,923,097 B2 Apr. 12, 2011 REJECTIONS The following rejections are before us for review: I. Claims 1–3, 5, 7, 8, and 10–12 stand rejected under 35 U.S.C. § 103(a) as being unpatentable over Munro and Lawandy. II. Claims 13–15 stand rejected under 35 U.S.C. § 103(a) as being unpatentable over Munro, Lawandy, and Heim. Appeal 2013-009847 Application 11/325,998 3 ANALYSIS Independent claim 1 recites, in relevant part, a method of “marking an article with a radiation watermark” that includes “applying an ordered periodic array of particles to an article in a configuration that marks the article, wherein the array diffracts radiation, such that radiation is reflected from the configuration as a radiation watermark at a detectable wavelength.” Appeal Br., Claims App. (emphasis added). Appellants provide in their Specification—in light of which the claims must be interpreted—that a radiation watermark is “a marking (such as a graphic design, lettering or the like) that is detectable as an image upon irradiation,” such as by exposure to ultraviolet light. Spec. ¶ 13 (emphasis added); see Appeal Br. 9, 10; Reply Br. 2. Rejections I and II both rely on a combination of teachings from Munro and Lawandy. See Final Act. 2–4, 7. The Examiner correctly finds that Munro, which does not relate to watermarks, discloses an ordered periodic array of particles in a colorant. Id. at 3 (citing Munro ¶¶ 12, 14, 20, 25). However, the Examiner acknowledges that Munro fails to disclose any “radiation being reflected from the configuration as a radiation watermark,” which is the entire thrust of Appellants’ method claims as noted supra. Id. For the concept of providing an article with a watermark, the Examiner turns to Lawandy, which does not relate to colorants, for a teaching of radiation that is reflected as a radiation watermark. Id. (citing Lawandy, col. 11, ll. 27–41). As the requisite articulated reasoning for combining these teachings, the Examiner states that it would have been obvious to “improve the particles present in the Munro ordered periodic array by adding the properties of the Lawandy watermark,” to covertly mark an article with a Appeal 2013-009847 Application 11/325,998 4 watermarked image that is not visible to the unaided observer, “thus providing the Munro article with an additional means by which to confirm the authenticity thereof.” Id. at 3–4 (emphasis added). Appellants argue that the Examiner’s reasoning for modifying the particles of Munro with the watermark properties of Lawandy is insufficient to establish a prima facie case of obviousness. See Appeal Br. 10–14; Reply Br. 2–5. We agree. Specifically, the proposed modification of adding Lawandy’s watermark properties to Munro’s particle array lacks a rational underpinning as required in a proper obviousness rejection. In particular, Appellants persuasively assert that the Examiner’s reasoning is lacking because the rejection presents no evidence that Munro’s particle array would be “improved” by adding properties to make them “not visible to the unaided observer,” as the Examiner states; instead, we agree with Appellants that such a modification would undermine the intended purpose of Munro’s disclosed visible colorants.2 See Appeal Br. 10–12; Reply Br. 4–5. Moreover, Appellants also persuasively assert that the Examiner’s reasoning is lacking because the rejection does not explain a rational basis for providing Munro with “an additional means by which to confirm the authenticity” of an article, as the Examiner states, when “[t]here is not an initial means by which to confirm the authenticity of an article in 2 We note that Appellants accurately characterize Munro’s disclosure as consistently relating to visible colorants or color compositions, such as those exhibiting a goniochromatic, or iridescent, effect (including the single mention of “security inks” in the “Background of the Invention” section at Paragraph 4), which are intended to be visible to the unaided observer. See, e.g., Munro ¶¶ 2, 4, 12–14, 20, 30, 34, 37, 54–62; Abstract. Appeal 2013-009847 Application 11/325,998 5 Munro nor is there any motivation to add such means,” as it does not relate to authentication. Appeal Br. 13; see Reply Br. 3–4. It is well established that “a patent composed of several elements is not proved obvious merely by demonstrating that each of its elements was, independently, known in the prior art.” KSR Int’l Co. v. Teleflex Inc., 550 U.S. 398, 418 (2007). In other words, the mere fact that known elements or features may be combined is not, in itself, a reason to combine them. Rather, an obviousness rejection further must explain the reasoning by which those findings support the Examiner’s conclusion of obviousness. Perfect Web Techs., Inc. v. InfoUSA, Inc., 587 F.3d 1324, 1328–30 (Fed. Cir. 2009). In this case, the rejection simply fails to meet this required standard. Speculation and conjecture cannot form the basis for concluding obviousness. See In re Warner, 379 F.2d 1011, 1017 (CCPA 1967) (“A rejection based on section 103 clearly must rest on a factual basis, and these facts must be interpreted without hindsight reconstruction of the invention from the prior art.”). Absent improper hindsight reconstruction, we fail to see a reasoned explanation based on a rational underpinning as to how or why Munro’s colorant particle array would be functionally modified by adding Lawandy’s covert watermark properties, and a reason for such modification is not otherwise evident from the record. Consequently, the conclusory goal of “improving” the particles present in the Munro array is insufficient to provide the requisite articulated reasoning with rational underpinning for combining the teachings of Munro and Lawandy. We note that Heim is relied on by the Examiner in Rejection II for teaching an additional feature of an array of particles comprising core-shell particles disposed within a matrix (see Final Act. 7–8), but not to cure the Appeal 2013-009847 Application 11/325,998 6 above-noted deficiency with respect to the reason to combine Munro and Lawandy. Accordingly, based on the record before us, we conclude that the Examiner has not met the burden of establishing a proper prima facie case of obviousness of the claimed subject matter. On this basis, we cannot sustain Rejections I and II as presented in the rejection of record. DECISION We REVERSE the Examiner’s rejections of claims 1–3, 5, 7, 8, and 10–15. REVERSED JRG Copy with citationCopy as parenthetical citation