Ex Parte Patton et al

Board of Patent Appeals and Interferences

Jul 23, 2012

09957011 (B.P.A.I. Jul. 23, 2012)

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.
09/957,011 09/20/2001 David L. Patton 82678/RLO 3496
1333 7590 07/23/2012
EASTMAN KODAK COMPANY
PATENT LEGAL STAFF
343 STATE STREET
ROCHESTER, NY 14650-2201
EXAMINER
FRIDIE JR, WILLMON
ART UNIT PAPER NUMBER
3724
MAIL DATE DELIVERY MODE
07/23/2012 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 BOARD OF PATENT APPEALS
AND INTERFERENCES
____________

Ex parte DAVID L. PATTON and JOHN P. SPOONHOWER
____________

Appeal 2010-000632
Application 09/957,011
Technology Center 3700
____________

Before LINDA E. HORNER, MICHAEL C. ASTORINO, and
JOHN W. MORRISON, Administrative Patent Judges.

HORNER, Administrative Patent Judge.

DECISION ON APPEAL

STATEMENT OF THE CASE
David L. Patton and John P. Spoonhower (Appellants) seek our
review under 35 U.S.C. § 134 of the Examiner’s decision rejecting claims
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Application 09/957,011

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1-3, 5, and 7 under 35 U.S.C. § 102(e) as anticipated by Naya (US 6,497,996
B1, iss. Dec. 24, 2002).1 We have jurisdiction under 35 U.S.C. § 6(b).
We REVERSE.
THE INVENTION
Appellants’ claimed invention relates to “creating an identification
marker in the form of an image used for authentication of documents.”
Spec. 1, ll. 7-8. Claim 1, reproduced below, is representative of the subject
matter on appeal.
1. A method of making a continuous tone image,
comprising the steps of:
making at least one micro discrete continuous tone image
on a photosensitive media wherein said discrete continuous
tone image is formed on a photosensitive media capable of
producing a continuous tone image using near-field optics, said
continuous tone image being less than about .015 mm.
Independent method claim 5 recites “forming a continuous tone image
on [photosensitive] media” and independent apparatus claim 7 recites “[a]
product having a plurality of micro discrete continuous tone images placed
thereon.”
ISSUE
The Examiner determined that Naya anticipates the claims in that it
“discloses a discrete continuous tone image formed by near field optics on a

1 Appellants also presented arguments to rebut a rejection of claims 1-3, 5,
and 7 under 35 U.S.C. § 103(a) as unpatentable over Brugada and Guerra.
Br. 4-7. The Examiner did not present this ground of rejection in the Office
Action from which the present appeal is taken. Ans. 6; Non-Final Office
Action dated January 12, 2005.
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photosensitive media” and that “the fine pattern disclosed by Naya et al[.] is
inherently continuous in the broadest sense.”2 Ans. 4. In other words, the
Examiner determined that Naya’s “line widths are of a continuous nature in
the same vein as those of appellant[s]” based on the ordinary meaning of
“continuous.” Ans. 5.
Appellants argue that Naya does not anticipate the claims because
“[t]here is no teaching or suggestion [of] providing a continuous tone line in
the Naya et al. reference.” Br. 4. 3 Appellants rely on the ordinary meaning
of “tone” as “[a] color or shade of color” and “[q]uality of color” and the
disclosure on page 4, lines 28-30 of the Specification as support for the
argument that “[a] ‘continuous tone’ image is an image having varying
shades and/or colors.” Id. Based on this proposed definition, Appellants
argue that Naya does not anticipate claim 1 because “[t]here is no teaching
or suggestion that the line of Naya et al. can or should produce any variation
in shade or color.” Id.
Thus, an issue presented by this appeal is whether the Examiner’s
interpretation of “continuous tone image” based on the ordinary meaning of
“continuous” is the broadest reasonable interpretation in light of the
Specification as it would be interpreted by one of ordinary skill in the art?

2 The Examiner interprets “continuous” as “‘… marked by uninterrupted
extension in space, time or sequence.’” Ans. 4.
3 “Br.” refers to the Substitute Appeal Brief filed on June 27, 2007.
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PRINCIPLES OF LAW
We determine the scope of the claims in patent applications not solely
on the basis of the claim language, but upon giving claims “their broadest
reasonable interpretation consistent with the specification” and “in light of
the specification as it would be interpreted by one of ordinary skill in the
art.” In re Am. Acad. of Sci. Tech Ctr., 367 F.3d 1359, 1364 (Fed. Cir. 2004)
(citations omitted).
ANALYSIS
The Examiner’s interpretation of “continuous tone image” fails to
define or account for the word “tone” in the claim phrase and fails to
acknowledge that the Specification uses “continuous tone” as a term of art
that has a meaning in the graphic arts different from the Examiner’s
proposed definition. As such, the Examiner’s definition of “continuous tone
image” is not reasonable in view of how one of ordinary skill in the art
would understand the phrase when read in light of the Specification.
The Specification discloses:
The indicia 10 can be an alphanumeric 30, a continuous tone
image of a person 32, place or thing 34, or a continuous tone
image of a characteristic 36 of the article such as texture as
shown in Figs. 1b, 1c, 1d, and 1e respectively.
Spec. 4, ll. 28-31. The phrase “continuous tone” is defined in graphic arts as
“[o]f an image, having gradations of color density with no clear
demarcation, as opposed to the distinct dots found in halftones.” ACADEMIC
PRESS DICTIONARY OF SCIENCE AND TECHNOLOGY (1992), retrieved from
http://www.credoreference.com/entry/apdst/continuous_tone (last visited
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July 10, 2012). The Specification, consistent with this ordinary meaning,
describes, with reference to Figure 10b, “a continuous tone image having a
density range between 0.1 and 2.0 density measured at nine discrete point[s],
as indicated by numerals 1 through 9. The density of the continuous tone
image 220 changes over the entire image.” Spec. 10, ll. 3-6; fig. 10b.
Compare Spec. 9, l. 29 – Spec. 10, l. 2; fig. 10a (describing a monotone
image). Based on Appellants’ use of the phrase “continuous tone image” in
the Specification in a manner consistent with the understanding in the art of
an image having gradations of color density, a person of ordinary skill in the
art would not understand this phrase to broadly refer to an image that is
“marked by uninterrupted extension in space, time or sequence.” The
Examiner has not pointed to where Naya discloses an image having a
density that changes over the image.
CONCLUSION
The Examiner’s interpretation of the claimed “continuous tone image”
based on the ordinary meaning of “continuous” is unreasonably broad in
light of the Specification as it would be interpreted by one of ordinary skill
in the art.
DECISION
For this reason, we REVERSE the decision of the Examiner to reject
claims 1-3, 5, and 7.

REVERSED

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