Ex Parte Patton

Board of Patent Appeals and Interferences

Jul 23, 2008

10762668 (B.P.A.I. Jul. 23, 2008)

UNITED STATES PATENT AND TRADEMARK OFFICE
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BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
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Ex parte EASTMAN KODAK COMPANY
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Appeal 2008-1276
Application 10/762,668
Technology Center 3700
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Decided: July 23, 2008
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Before JAMESON LEE, RICHARD TORCZON, and
MICHAEL P. TIERNEY, Administrative Patent Judges.

Filed by TORCZON, Administrative Patent Judge.

DECISION ON APPEAL
STATEMENT OF THE CASE
Claims 1, 2, 4-6, and 8 are rejected as having been obvious under
35 U.S.C. § 103 (Ans. at 4). The appellant, Eastman Kodak Company
(Eastman Kodak), seeks review under 35 U.S.C. § 134. We have
jurisdiction under 35 U.S.C. § 6(b). We AFFIRM.
Appeal 2008-1276
Application 10/762,668

The examiner relies upon the following prior art in rejecting the
claims (Ans. at 3):
Guttag US Patent 5,120,089 9 Jun. 1992
Martin US Patent 5,601,683 11 Feb. 1997

The examiner uses the following patents as rebuttal evidence to
support the examiner's position that Eastman Kodak's third indicium is
inherent (Ans. at 3-5):
Denenberg, et al. US Patent 5,673,338 30 Sept. 1997
Rhoads US Patent 6,771,796B2 3 Aug. 2004
THE CLAIMS
Eastman Kodak's claimed invention relates to the printing and
verification of limited edition stamps (Spec. at 1). Eastman Kodak argues
claims 1, 2, 4-6 and 8 as a group (Br. at 3-11). Claims 2 and 4-6 depend on
claim 1 (Br. at 13). Claims stand or fall together if they are not argued
separately. 37 C.F.R. § 41.37(c)(1)(vii). We select claim 1 as broadly
representative of the claims on appeal. Claim 1 is reproduced below from
the Appeal Brief (Br. at 13):
A limited edition official postal stamp comprising:
a visible first indicia [sic] identifying said limited edition
stamps as being a limited edition;
a second indicia [sic] not capable of being scanned and
further not visible under normal conditions for confirming that
said limited edition stamp is a valid limited edition stamp, said
second indicia is made from an ink that can be seen when
viewed under UV or infrared light; and
a third indicia [sic] for identifying a printer and/or a
location where said limited edition stamp was printed.

Eastman Kodak contends that the references fail to disclose the
claimed second indicium (Br. at 3-8). In addition, Eastman Kodak contends
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that the cited prior art does not expressly or inherently teach a third indicium
for identifying the printer that printed the stamp as recited in claims 1 and 8
(Br. at 8-11).
ISSUE
Did Eastman Kodak show the examiner erred in rejecting claims 1, 2,
4-6, and 8 as being directed to subject matter that would have been obvious
in view of the cited prior art?
FINDINGS OF FACT
1. A postage stamp is a philatelic item (Guttag, col. 2, ll. 33-42).
2. Guttag relates to a method of protecting philatelic items against
alterations and forgeries (Guttag, col. 1, ll. 6-7).
3. Guttag discloses that a visible mark
of an expert, expert committee, or owner can be
applied to a postage stamp (Guttag, col. 2, ll. 43-
47; "GPSY" in Guttag FIG. 1, right).
4. Guttag discloses that a second
visible mark identifying the philatelic item as a
forgery can be printed on the back of the
philatelic item (Guttag, col. 2, ll. 52-54;
"FORGERY" in Guttag FIG. 1, right).
5. Guttag teaches that an expert or expert committee can
individualize the marking on the stamp in ways other than by the position of
the mark, for example, by serially numbering the copies of the stamp to
distinguish each stamp (Guttag, col. 4, ll. 3-12).
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6. Martin discloses a fluorescence printing means that causes
printed indicia to fluoresce under ultra-violet (UV) light (Martin, col. 3,
ll. 56-60).
7. Rhoads teaches that a forensic tracer can memorialize the serial
number of the machine that processed a banknote (Rhoads, col. 2, ll. 57-60).
8. Rhoads teaches that a forensic tracer is not normally inserted
because of privacy concerns (Rhoads, col. 2, ll. 60-63).
9. Denenberg discloses that print documents have a unique
microscopic anomalies created by random physical and statistical effects
occurring at the time of printing, giving each object a unique fingerprint that
is virtually or wholly impossible to reproduce (Denenberg, col. 3, ll. 49-59).
10. Eastman Kodak discloses that collectors like limited editions that
are individually numbered (Spec. at 1).
11. According to Eastman Kodak, a difference between Eastman
Kodak's claimed invention and Guttag's teachings is that Guttag prints a
second visible mark on the stamp, while Eastman Kodak's claimed invention
prints the second indicium not visible under normal viewing conditions (Br.
at 4).
12. According to Eastman Kodak, another difference between
Eastman Kodak's claimed invention and the Guttag patent is that Guttag
does not print a third indicium for identifying the printer or location where
the limited edition stamp was printed (Br. at 8).
13. According to Eastman Kodak, a person of ordinary skill in the art
would have known that an artist can create an etching and then print a
limited number of copies that are individually numbered (Spec. at 1).
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14. A person of ordinary skill in the in the philatelic art would have
known that stamps can be altered and forged (Guttag, col. 1, ll. 11-13).
15. A person of ordinary skill in the philatelic art would have known
that experts who specialize in determining the authenticity print their names
or other marks showing their identities on philatelic items (Guttag, col. 1,
ll. 13-27).
16. A person of ordinary skill in the art would have known that
various methods have been developed to deter photocopying of originals
including special inks, special patterns, or graduations in the thickness of the
printed image, or some combination of these methods (Martin, col. 1, ll. 17-
23).
17. A person of ordinary skill in the art would have known that UV
fluorescent inks that are invisible in daylight and in normal artificial light
can be used to mark valuable documents to reduce the possibility of forgery
(Martin, col. 2, ll. 36-41)
18. A person of ordinary skill in the art would have known that each
printed document has unique characteristics on a microscopic level because
of differences in the ink's distribution on the texture of the paper
(Denenberg, col. 1, ll. 47-54).
19. Eastman Kodak has not directed us to any evidence of secondary
factors.
PRINCIPLES OF LAW
Pending claims must be interpreted as broadly as their terms
reasonably allow. In re Zletz, 893 F.2d 319, 321 (Fed. Cir. 1989). An
applicant seeking a narrower construction must either show why the broader
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construction is unreasonable or amend the claim to state expressly the scope
intended. In re Morris, 127 F.3d 1048, 1057 (Fed. Cir. 1997).
In analyzing obviousness, the scope and content of the prior art must
be determined, the difference between the prior art and the claim
ascertained, and the ordinary level of skill in the art resolved. Graham v.
John Deere Co. of Kansas City, 383 U.S. 1, 17 (1966). The combination of
familiar elements according to known methods is likely to be obvious when
it does not more than yield predictable results. KSR Int'l Co.,
127 S.Ct. 1727, 1740 (2007). Non-obviousness cannot be established by
attacking references individually when the rejection is based upon the
teachings of a combination of references.” In re Merck & Co. Inc., 800 F.2d
1091, 1097 (Fed. Cir. 1986). A teaching, motivation, or suggestion may be
implicit from the prior art as a whole, rather than expressly stated in the
references. In re Kahn, 441 F.3d 977, 987-88 (Fed. Cir. 2006).
Inherency 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 Robertson, 169 F.3d 743, 745 (Fed. Cir. 1999). After
the examiner establishes a basis for inherency, the burden shifts to the
appellant to prove that the subject matter shown to be in the prior art does
not possess the characteristic relied on. In re King, 801 F.2d 1324, 1327
(Fed. Cir. 1986). The United State Patent and Trademark Office (PTO) is
not equipped to perform testing. Id. at 1327.
ANALYSIS
First, Eastman Kodak states that the examiner added new references
in the examiner's answer. Eastman Kodak argues that the examiner should
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have entered a new ground of rejection that includes the Denenberg and
Rhoads references (Br. at 3).1 The examiner explains that the grounds for
rejection remain the same. Claims 1, 2, 4-6, and 8 are rejected under
35 U.S.C. § 103(a) as being unpatentable over Guttag in view of Martin.
The examiner states that the Denenberg and Rhoads references are cited as
rebuttal evidence to support the examiner's position of inherency that each
printer inherently prints the third indicium that can be used to identify the
printer that printed the stamp (Ans. at 4-5).
We shall not use the Rhoads reference. The forensic tracer taught in
Rhoads to identify the printer may or may not be implanted into the
document because of privacy concerns. Inherency requires that forensic
tracers necessarily be implanted in each document.(Findings 7-8).
Therefore, Rhoads's forensic tracer can not be used to show inherency of a
third indicium to identify the printer.
Denenberg teaches that each printed document has a unique
microscopic anomalies created by the random physical and statistical effects
that occur when printing (Finding 7). These microscopic characteristics are
necessarily present in each printed document (Finding 16). Hence, we
continue our analysis using only the Denenberg reference as rebuttal

1 If there was indeed a procedural error, Eastman Kodak's remedy
must come by way of a petition. MPEP § 1002.02(c). Eastman Kodak has
not identified any basis for the Board to order such relief on its own
authority. Hence, we shall proceed with the appeal and apply these
references as evidence of inherency to the extent they are consistent with
this purpose.
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evidence that each printer has a unique fingerprint that can be used to
identify the printer that printed the stamp.
Second, Eastman Kodak argues that the Guttag reference fails to
discloses a second indicium that is "not capable of being scanned and further
not visible under normal conditions …made from an ink that can be seen
when viewed under UV or infrared light" as recited in claims 1 and 8 (Br.
at 4). Guttag discloses a second visible mark that identifies the philatelic
item as either a forgery or a genuine postage stamp (Finding 4). The
examiner combines Guttag's second visible mark with Martin's use of UV
inks (Ans. at 6). A person of ordinary skill in the philatelic art would have
known that forgery is a problem in stamp collecting (Finding 14). Experts,
who specialize in determining the authenticity of stamps, print their name or
other marks on genuine postage stamps (Finding 15). A person of ordinary
skill in the art would have known that UV inks can be used to print a second
indicium that would make the second indicium invisible under normal
viewing conditions (Finding 16). Since forgery is a problem in stamp
collecting, the examiner's rationale that a person of ordinary skill in the art
would have been motivated to use UV inks to print a second indicium is
reasonable (Findings 6 and 17). Eastman Kodak is combining known
elements in the prior art to obtain a predictable result (Findings 4 and 7).
Eastman Kodak has not shown reversible error.
Third, Eastman Kodak argues that the Guttag reference does not
disclose a second indicium "for confirming that said limited edition stamp is
a valid limited edition stamp" (Br. at 4). We take the broadest reasonable
interpretation of the contested limitation in view of the specification.
Eastman Kodak has not pointed us to any specific definition of indicia in its
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specification for confirming that the stamp is a valid limited edition postage
stamp. Eastman Kodak has not argued a specific definition in its brief (Br.
at 3-8).
We construe indicia that confirm the limited edition official postage
stamp is a valid stamp to include marks put on the stamp by an expert or
marks indicating that the stamp is a genuine stamp or a forgery stamp
(Finding 5). A person of ordinary skill in the art would have known that one
way to confirm that the stamp is a limited edition is to use a series of
individual numbers printed on each copy of the stamp (Findings 5, 10,
and 13). We find that Guttag discloses a mark that satisfies the claim
limitation to confirm whether a stamp is a valid limited edition postage
stamp (Findings 1-5). Eastman Kodak has not shown reversible error.
Fourth, Eastman Kodak argues that Martin reference does not
expressly or inherently disclose the printing of a second indicium in the
manner recited in claims 1 and 8 (Br. at 5). Eastman Kodak attacks the
references individually when the examiner uses the combination of Guttag
and Martin to reject the claims (Ans. at 4). The examiner's rationale, that
one of ordinary skill in the art would have known to combine Martin's UV
ink with Guttag's second indicium, is reasonable because UV inks have been
used to reduce forgery of valuable documents (Finding 16). Forgery is a
known problem in stamp collecting (Finding 14). Eastman Kodak has not
shown reversible error.
Fifth, Eastman Kodak argues that the Denenberg reference does not
disclose, expressly or inherently, the printing of a second indicium in the
manner recited in claims 1 and 8 (Br. at 6). The examiner uses the
combination of Guttag in view of Martin to reject the claims (Ans. at 4).
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Eastman Kodak's argument is not persuasive because the Denenberg
reference is being used by the examiner as rebuttal evidence that the third
indicium is inherently disclosed (Ans. at 3-4).
Sixth, Eastman Kodak makes four separate arguments that the Guttag,
Martin, Denenberg and Rhoads patents do not disclose a third indicium for
identifying a printer as recited in claims 1 and 8 (Br. at 8-10). The examiner
states that the third indicium is inherent because of microscopic irregularities
in the printing of a stamp. According to the examiner, these irregularities
are inherently the third indicia. Guttag teaches printing a second indicium
on a stamp (Finding 4). The examiner urges that the third indicium is
inherent when the printer prints the second indicium. The examiner's
rationale is that each printer has a unique fingerprint that can be used to
identify the printer (Ans. at 5). The examiner uses the Denenberg reference
as rebuttal evidence to support his finding that the third indicium is
necessarily present (Ans. at 4). Eastman Kodak bears the burden of showing
that the relied upon inherent characteristics are not in the Guttag reference.
Eastman Kodak has not met this burden. The examiner is not equipped to
prepare a sample according to Guttag and then perform microscopic testing
to see if it matches Denenberg's prediction. We find the examiner's rationale
is reasonable because a person of ordinary skill in the art would have
expected that each printed document has unique characteristics on a
microscopic level (Finding 18).
Finally, we take the broadest reasonable interpretation of the third
indicium for identifying a printer or location where the limited edition stamp
was printed. Eastman Kodak has not pointed us to any specific definition of
indicium in its specification for identifying the printer or location where the
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limited edition stamp was printed. Eastman Kodak has not argued a specific
definition in its brief (Br. at 8-11). Eastman Kodak is responsible for
drafting the claim to include only what it intends to include. We construe
the meaning of indicium for identifying the printer where the limited edition
stamp was printed to include microscopic anomalies occurring at the time of
printing. These anomalies give each printed stamp a unique fingerprint that
can be used to identify the printer that printed the stamp (Finding 9). We
find that Guttag teaches printing a second indicium on a stamp. The
examiner's rationale is that by printing a second indicium on the stamp the
third indicium is inherent. We find that each printed document has a unique
fingerprint that is necessarily present that satisfies the claim limitation to
confirm the printer that printed a limited edition stamp (Findings 2-5
and 18). Eastman Kodak cites no evidence that the third indium is not
present in each document that can be used to identify the printer. Eastman
Kodak has not shown reversible error.
CONCLUSION
Eastman Kodak has failed to show that the examiner erred in rejecting
the claims over the prior art. Consequently, the rejection of all the pending
claims under 35 U.S.C. § 103(a) is —
AFFIRMED
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yrt

Pamela R. Crocker, Esq.
Patent Legal Staff
Eastman Kodak Company
343 State Street
Rochester, N.Y. 14650-2201
Tel: 585-588-2728
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