Ex Parte Rosset

Patent Trial and Appeal Board

Feb 6, 2013

10363261 (P.T.A.B. Feb. 6, 2013)

UNITED STATES PATENT AND TRADEMARKOFFICE
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.
10/363,261 08/20/2003 Henri Rosset ROSS3004/REF 8144
23364 7590 02/06/2013
BACON & THOMAS, PLLC
625 SLATERS LANE
FOURTH FLOOR
ALEXANDRIA, VA 22314-1176
EXAMINER
DICUS, TAMRA
ART UNIT PAPER NUMBER
1791
MAIL DATE DELIVERY MODE
02/06/2013 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 HENRI ROSSET
________________

Appeal 2010-005859
Application 10/363,261
Technology Center 1700
________________

Before BRADLEY R. GARRIS, LINDA M. GAUDETTE, and
MARK NAGUMO, Administrative Patent Judges.

NAGUMO, Administrative Patent Judge.

DECISION ON REQUEST FOR REHEARING
Appeal 2010-005859
Application 10/363,261

2
Henri Rosset (“Rosset”) timely requests reconsideration of the
Board’s decision,1 seeking reversal of those grounds of rejection affirmed.
(Request 5.)2
Rosset argues that the Board failed to interpret the term “coated sheet
of security paper” in a manner “consistent with the interpretation that those
of ordinary skill in the art would reach.” (Request 1, last para.)
Accordingly, in Rosset’s view, the Board failed to give proper weight to the
term, and mistakenly found that Huang described a coated sheet of security
paper.
The term “coated sheet of security paper” is found in the preamble of
claim 1, which reads in parts most relevant to the Request as follows:
A coated sheet of security paper comprising
cellulose fibers, cotton fibers, synthetic fibers or mixtures
thereof,
security elements and has
a high print quality and a high resistance to circulation,
at least one side of said sheet is coated with a coating
comprising
* * * * *.
(Claims App., Br. 15; indentation, paragraphing, and emphasis added.)
More specifically, Rosset argues, inter alia, that the Board erred in
finding that Huang discloses a “coated security paper” because Huang
discloses a coated polymeric film that would have to be laminated to a paper

1 Decision on Appeal (“Op.”), issued 15 November 2011.
2 Request for Rehearing 37 C.F.R. § 41.52, filed 17 January 2012. The
Board sincerely regrets the inconvenience to Rosset and Counsel caused by
the delay in responding to the request.
Appeal 2010-005859
Application 10/363,261

3
substrate. Such a laminated object, in Rosset’s view, “would not be
considered a coated paper by one of ordinary skill in the art” in light of
the 261 Specification. (Request 2, last para.)
The Board considered claim 1 at length in the original Opinion in
support of the decision, and concluded that “claim 1 does not specify the
coated sheet in a manner that excludes additional elements such as the
retroreflective layer described by Huang.” (Op. 6.) The thing claimed
comprises specified fibers, security elements, has certain specified
properties, including the requirement that “at least one side of said sheet is
coated with a [further specified] coating.” As pointed out in the Opinion, the
transitional language “comprising” opens the claim to non-recited materials,
including laminated layers between recited fibers and the recited coating.
(Id. at 7, 1st full para.) We understand the Examiner’s rejection to be based
on the protected paper documents described or suggested by Huang, covered
by the security film that is in turn covered by the improved polymer coating
containing silica described by Huang. (Id. at 5-6, and 8, last full para.)
Rosset attempts to read claim 1 as requiring that the recited coating be
applied directly to the cellulose fibers, with, perhaps, no more than the
security elements and the print materials between the fibers and the coating.
The flaws in this interpretation were addressed directly in the Opinion.
(Id. at 8.) As for the arguments that persons of ordinary skill in the art
would understand the claims terms, other than as we have interpreted them,
as indicated (id. at 6, 1st full para.), Rosset has not directed our attention to
probative evidence of record supporting those arguments. Moreover, the
interpretation of claims is a pure question of law, and the breadth of the
Appeal 2010-005859
Application 10/363,261

4
appealed claims arises from the recited and necessarily implicit relations
among the elements, not merely from the elements themselves.
ORDER
The request for rehearing is granted to the extent that Rosset’s
arguments have been considered, but the requested relief is denied.
DENIED

sld