Ex Parte Reid et al

Patent Trial and Appeal Board

May 27, 2014

10586291 (P.T.A.B. May. 27, 2014)

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.
10/586,291 03/14/2007 Duncan Hamilton Reid 0002978USU/2297 4133
27623 7590 05/27/2014
OHLANDT, GREELEY, RUGGIERO & PERLE, LLP
ONE LANDMARK SQUARE, 10TH FLOOR
STAMFORD, CT 06901
EXAMINER
LEWIS, JUSTIN V
ART UNIT PAPER NUMBER
3725
MAIL DATE DELIVERY MODE
05/27/2014 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 DUNCAN HAMILTON REID,
GERALD SIGNEY PAYNE, PAUL HOWLAND,
and PETER MCLEAN HENDERSON
____________________

Appeal 2012-004141
Application 10/586,291
Technology Center 3700
____________________

Before: JENNIFER D. BAHR, EDWARD A. BROWN,
and JAMES P. CALVE, Administrative Patent Judges.

CALVE, Administrative Patent Judge.

DECISION ON APPEAL

STATEMENT OF THE CASE
Appellants appeal under 35 U.S.C. § 134 from the rejection of claims
1-3, 5-7, 9-22, and 24-34. App. Br. 2. Claims 4, 8, and 23 are cancelled. Id.
We have jurisdiction under 35 U.S.C. § 6(b).
We REVERSE.
Appeal 2012-004141
Application 10/586,291

2
CLAIMED SUBJECT MATTER
Claims 1, 18, and 33 are independent. Claim 1 is reproduced below.
1. A security substrate comprising:
a substrate; and
at least two elongate security elements each having a
width of less than or equal to 6mm,
wherein said at least two security elements are at least
partially embedded within said substrate and run substantially
parallel to each other with a gap therebetween of no greater
than 10mm,
wherein said at least two security elements and said gap
occupy a zone that has a total cross-directional width that is less
than or equal to 14mm, and
wherein said at least two security elements have different
security features.

REJECTIONS
Claims 1-3, 5-7, 9, 10, 18-22, 24, and 30-34 are rejected under 35
U.S.C. § 103(a) as unpatentable over Schwenk (US 2003/0104176 A1; pub.
Jun. 5, 2003).1
Claims 1-3, 5-7, 9, 10, 18-22, 24, and 30-34 are rejected under 35
U.S.C. § 103(a) as unpatentable over Lee (US 4,290,630; iss. Sep. 22, 1981).
Claims 11-17 and 25-29 are rejected under 35 U.S.C. § 103(a) as
unpatentable over Schwenk and Hardwick (US 6,471,247 B1; iss. Oct. 29,
2002).
Claims 11-17 and 25-29 are rejected under 35 U.S.C. § 103(a) as
unpatentable over Lee and Hardwick.

1 The Examiner made separate rejections of claims 1-3, 5-7, 9, 10, 18-22, 24,
and 30-34 as unpatentable over Schwenk and also as unpatentable over Lee.
However, the Examiner combined the findings for each rejection under a
single heading. See Ans. 5-10. For convenience and clarity, we treat each
rejection separately with Appellants’ arguments for each rejection.
Appeal 2012-004141
Application 10/586,291

3
ANALYSIS
Claims 1-3, 5-7, 9, 10, 18-22, 24, and 30-34 as unpatentable over Schwenk
Independent claims 1, 18, and 33 recite a security substrate (claims 1
and 33) and security article (claim 18) that comprises at least two elongate
security elements (claim 1) or at least two elongate security threads (claims
18 and 33) that are at least partially embedded within the substrate and run
substantially parallel to each other.
The Examiner found that Schwenk discloses a substrate (documents
1a, 1b) and at least two elongate security elements or threads (control areas
8a-8d, subareas 7a-7d) that are at least partially embedded in the substrate
and that run substantially parallel to each other, as recited in claims 1, 18,
and 33. Ans. 5, 7, 9. The Examiner interpreted the claim term “elements” to
mean “a distinct part of a composite device” and found that subareas 7a-7d
and central areas 8a-8d are distinct parts of a composite device. Ans. 14.
The Examiner found that these security elements are embedded in the
substrate “in much the same manner that a photograph is commonly
embedded within the boundaries of a newspaper’s front page.” Id. at 14, 16.
The Examiner further found that the security elements do run substantially
parallel to each other as disclosed in Figures 2a and 2b. Id. Regarding
claims 18 and 33, the Examiner found that subareas 7a-7d and control areas
8a-8d represent filament-like strips of the composite device and therefore
can be considered to be “threads” which the Examiner defined as “a
filament.” Ans. 16.
We agree with Appellants that control areas 8a-8d and subareas 7a-7d
of Schwenk do not correspond to the “elongate security elements” of claim 1
or the “elongate security threads” of claims 18 and 33. Control areas 8a-8c
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Application 10/586,291

4
are illustrated by dash-dotted lines in Figure 1 to indicate areas in which a
detector checks the characteristics of luminescent mottled fibres embedded
in the security paper 2. Schwenk, paras. [0034, 0037]. Subareas 7a-7d are
regions of document 1 where mottled fibres A, B are embedded in a random
fashion. Schwenk, paras. [0018-0020], [0036], [0037]; figs. 1, 2a. The
Examiner has not established that the mottled fibres A, B in these areas are
substantially parallel to one other. App. Br. 5. In addition, Schwenk does
not disclose the claimed gap between the control areas 8a-8c or subareas 7a-
7d or the total cross-directional widths of these areas and the Examiner has
not established that the prior art recognizes these features as result-effective
variables to be optimized through routine experimentation. Ans. 5, 7, 10.
Appellants disclose advantages that result from the claimed gap and width at
pages 9-11 of the Specification. Spec. 13, l. 13 to Spec. 14, l. 12; Spec. 4, ll.
23-28; App. Br. 5-6 (citing Spec. 4, lines 14-22); see Reply Br. 4-6. We do
not sustain the rejection of claims 1-3, 5-7, 9, 10, 18-22, 24, and 30-34 as
unpatentable over Schwenk.
Claims 1-3, 5-7, 9, 10, 18-22, 24, and 30-34 as unpatentable over Lee
The Examiner found that Lee discloses a substrate (fig. 5) and at least
two elongate security elements (threads 2) where the security elements are at
least partially embedded in the substrate and run substantially parallel to
each other with a gap therebetween. Ans. 5, 7.
We agree with Appellants that the Examiner has not established that
Lee discloses at least two elongate security elements or security threads that
are embedded within a substrate, as recited in claims 1, 18, and 33. App. Br.
10-12. Figure 5 of Lee discloses a single thread 2 with two contoured edges
12. Lee, col. 4, ll. 54-60. Figures 3a-3g disclose various embodiments of a
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Application 10/586,291

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single thread. Lee, col. 3, ll. 60-63. Lee’s disclosure that threads 2 may be
cut into suitable lengths that are then inserted into or affixed to the surface of
sheet material (col. 3, ll. 48-53) does not necessarily establish that more than
one thread 2 is inserted into a single substrate, particularly when Lee only
discloses embodiments with a single thread. See Ans. 18-19. In addition,
Lee does not disclose the claimed gap and width and the Examiner has not
established that the prior art recognizes these dimensions as result effective
variables to be optimized. Ans. 5, 7, 10. As discussed supra, Appellants
disclose advantages of this configuration. We do not sustain the rejection of
claims 1-3, 5-7, 9, 10, 18-22, 24, and 30-34 as unpatentable over Lee.
Claims 11-17 and 25-29 as unpatentable over Schwenk/Lee and Hardwick
The Examiner relied on Hardwick to disclose features of claims 11-17
and 25-29, which depend directly or indirectly from claim 1, and not to
overcome any deficiencies of Schwenk or Lee as to claim 1. Ans. 11-13.
Accordingly, we do not sustain the rejection of claims 11-17 and 25-29.

DECISION
We REVERSE the rejections of claims 1-3, 5-7, 9-22, and 24-34.

REVERSED

mls