Ex Parte SanchezDownload PDFPatent Trial and Appeal BoardOct 30, 201411645855 (P.T.A.B. Oct. 30, 2014) Copy Citation UNITED STATES PATENT AND TRADEMARK OFFICE ____________ BEFORE THE PATENT TRIAL AND APPEAL BOARD ____________ Ex parte LUIS A. SANCHEZ ____________ Appeal 2012-010656 Application 11/645,855 Technology Center 3700 ____________ Before ANNETTE R. REIMERS, BRANDON J. WARNER, and TIMOTHY J. GOODSON, Administrative Patent Judges. REIMERS, Administrative Patent Judge. DECISION ON APPEAL STATEMENT OF THE CASE Luis A. Sanchez (Appellant) appeals under 35 U.S.C. § 134 from the Examiner’s decision to reject under 35 U.S.C. § 103(a) claims 11–15 as unpatentable over Jotcham (US 6,616,190 B1; iss. Sept. 9, 2003), Weinberger (US 4,505,498; iss. Mar. 19, 1985), Takeda (US 5,041,353; iss. Aug. 20, 1991); and Hechinger (US 6,029,883; iss. Feb. 29, 2000). Claims 1–10 and 16–25 have been withdrawn from consideration. We have jurisdiction under 35 U.S.C. § 6(b). We AFFIRM. Appeal 2012-010656 Application 11/645,855 2 CLAIMED SUBJECT MATTER The claimed subject matter “relates to envelopes and, more particularly, to secure envelopes and methods for securing information to preserve confidentiality and prevent fraud.” Spec. para. 1; Figs. 1, 3. Claim 11, the sole independent claim, is illustrative of the claimed subject matter and recites: 11. A method of detecting information located inside a closed envelope without opening the envelop comprising: providing a windowed envelope comprising: a first panel with an interior and an exterior side; a second panel attached to the first panel to define an interior portion having opposite side edges, a closed edge portion and an opening portion opposite the closed edge portion to provide access to the interior portion of the envelope; and a flap for sealingly adhering to an exterior surface of the first panel, the flap having an interior and an exterior side and attached to the second panel at an edge of the second panel opposite the closed edge portion, the envelope comprising thereon an adhesive layer on the interior side of the flap comprising an adhesive; wherein a non-transparent window is located across a window opening on the first panel or the second panel, the window comprising a reducible dye and a microencapsulated reducing agent, which is adapted to irreversibly change to transparent upon heating the window to a temperature above room temperature; wherein information is located in the envelope behind the window; heating the window to a temperature above room temperature, wherein the window irreversibly changes from non-transparent to transparent thereby exposing the information located in the envelope behind the window. ANALYSIS Appellant has not presented arguments for the patentability of claims 12–15 apart from claim 11. See Br. 8–12. Therefore, in accordance with Appeal 2012-010656 Application 11/645,855 3 37 C.F.R. § 41.37(c)(1)(vii) (2011), we select claim 11 as the representative claim, with claims 12–15 standing or falling with claim 11. Independent claim 11 calls for a method of detecting information located inside a closed envelope without opening the envelope including providing a windowed envelope having “a non-transparent window . . . located across a window opening on the first panel or the second panel.” Br. 13, Clms. App. The Examiner finds that Jotcham discloses a method of detecting information including “[p]roviding a non-transparent window located [across a window opening] on a first panel.” Ans. 4–5; see also id. at 7. The Examiner finds that “Jotcham does not expressly disclose the window being provided on an envelope as claimed, the window including reducible dye and microencapsulated reducing agent as material components, or the change specifically being irreversible.” Id. at 5. The Examiner also finds that “Weinberger teaches making a visibility changing window similar to that taught by Jotcham to change irreversibly in a two stage heating process in order to signify the cancellation thereof.” Id. (citing Weinberger, col. 2, l. 2). The Examiner concludes that it would have been obvious “to make the window system taught by Jotcham change color irreversibly at an additional elevated temperature as taught by Weinberger, in order to signify the cancellation thereof in order to use in a vending system.” Id. The Examiner further finds that “Takeda teaches that reducible dye and microencapsulated reducing agent are known materials to use in the temperature sensitive material arts (throughout specification).” Id. The Examiner further concludes that it would have been obvious Appeal 2012-010656 Application 11/645,855 4 to use reducible dye and microencapsulated reducing agent [as taught by Takeda in Jotcham’s device], since it has been held to be within the general skill of a worker in the art to select a known material on the basis of its suitability for the intended use as a matter of obvious design choice. Ans. 5–6 (citing In re Leshin, 277 F.2d 197 (CCPA 1960); Ballas Liquidating Co. v. Allied Indus. of Kan., 205 USPQ 331, 348 (D. Kan. 1979)). The Examiner also finds that “Hechinger teaches the desirability and general knowledge with in [sic] the art of incorporating a security window into an envelope.” Id. at 6 (citing Hechinger, col. 6, ll. 4–13). The Examiner also concludes that it would have been obvious “to incorporate the window system taught by Jotcham as modified . . . into an envelope in light of Hechinger[’s] teaching incorporating security windows into envelopes for use in the mail system.” Id. Additionally, the Examiner finds and concludes that all of the component parts are known in Hechinger and Jotcham as modified by Weinberger, and Takeda. The only difference is the combination of all the known elements into a single device by incorporating the window system taught by Jotcham as modified by Weinberger, and Takeda into an envelope as taught by Hechinger. Thus, it would have been obvious to one having ordinary skill in the art to incorporate the window taught by Jotcham as modified by Weinberger, and Takeda into an envelope as taught by Hechinger, since the window security system in no way affects the other functions of the envelope assembly which already includes a security envelope and particular window system [that] can be used in combination with an envelope assembly Appeal 2012-010656 Application 11/645,855 5 to achieve the predictable results of hiding information until the heating/retrieval process is initiated as is otherwise well known in the art. Ans. 6–7. Appellant contends that [w]ith regard to independent claim 11, Appellant respectfully submits that [Jotcham] does not teach a window and specifically teaches away from a “window” across an opening in the substrate as claimed because a single substrate sheet (FIG. 1, Col. 1, l. 51- Col. 2, l. 3) with a security thread partially embedded in it or adhered to the surface of the substrate must be used. The Examiner suggests at page 5 of the Final Office Action that [Jotcham] literally calls the readable area a window. However, Appellant’s [S]pecification and the amended independent claim 11 are clear in defining the window across a window opening in the panel. See, e.g., FIGs. 3-4 . . . and associated description in the [S]pecification. [Jotcham] expressly teaches away from the configuration of “a non-transparent window is located across a window opening on the first panel or the second panel” and thus cannot be properly used to establish a prima facie rejection. Br. 11; see also id. at 10.1 Appellant’s argument is not persuasive. A teaching away requires a reference to actually criticize, discredit, or otherwise discourage the claimed solution. See In re Fulton, 391 F.3d 1195, 1201 (Fed. Cir. 2004) (“The prior 1 The Specification describes that “a non-transparent window is located on the first panel or the second panel.” Spec. para. 8; see also id. at paras. 9, 10, 11. The Specification further describes that “in Fig. 3, envelope 10 comprises a nontransparent window 36 in any suitable shape, size and location on envelope 10.” Spec. para. 31 (emphasis added), Fig. 3. Appeal 2012-010656 Application 11/645,855 6 art’s mere disclosure of more than one alternative does not constitute a teaching away from any of these alternatives because such disclosure does not criticize, discredit, or otherwise discourage the solution claimed”). At the outset, the Examiner correctly finds that Jotcham “disclose[s] the thread being visible through ‘windows 12’.” Ans. 8; Jotcham, col. 3, ll. 60–64; Figs. 1, 2. In addition, Jotcham in no way criticizes, discredits, or otherwise discourages the use of window across a window opening in the panel (substrate). To the contrary, Jotcham discloses that in order to enhance security documents against modern counterfeiting techniques making use of sophisticated colour separation, printing and colour photocopy technology, it has become common to use a security thread comprising a thin layer of [aluminum] on a plastic support which is exposed on one side of the sheet [substrate] at intervals along the length of the thread, the region of exposure being referred to as a window. . . . The dimensions of the windows typically used are from 3 mm to 14 mm lengthways, . . . the positioning of the windows may be controlled to allow registration of the window with respect of the document [substrate] and other security features. Jotcham, col. 1, l. 61 – col. 2, l. 9 (emphasis added); see also id. at claim 15, col. 6, ll. 63–67 (“A security material as claimed in claim 13 in which the security element is at least partially embedded in the material between the opposed surfaces thereof and portions of the security element are exposed in windows in one or both surfaces”) (emphasis added). Based on the foregoing, Jotcham discloses a “window” across an opening in the panel (substrate). Moreover, in response to Appellant’s argument, the Examiner reasons that Appeal 2012-010656 Application 11/645,855 7 Figures 1 and 2 of Jotcham, as well as the second paragraph of the Detailed Description, disclose the thread being visible through “windows 12”. As shown in Figures 3 and 4 of Jotcham and the associated disclosure, there are multiple layers applied on top of the embedded security thread, through which the thread is visible when activated at a specific temperature. These temperature changeable layers form a window across a window opening, 12, regardless of the fact that all layers are laminated into a single substrate. The [E]xaminer disagrees that Jotcham expressly teaches away from the claimed configuration of “a non-transparent window is located across a window opening on the first panel or the second panel” because the changeable layers of Jotcham must span across the areas where the thread is visible (the windows) otherwise Jotcham’s invention would not operate as intended. The layers spanning across the windows 12 are a temperature changeable window structure as claimed by [A]ppellant, with the modifications set forth in the rejection. Ans. 8. The Examiner’s findings and conclusions are based on rational underpinnings. Appellant has not apprised us of error in the Examiner’s findings and conclusions. Accordingly, for the foregoing reasons, the disclosure of Jotcham does not teach away from Appellant’s claimed invention. Appellant also contends that the teachings of [Jotcham] in the proposed combination would not operate as intended with a window on a flap. Moreover, one of skill in the art would not look to [Weinberger] to modify Appeal 2012-010656 Application 11/645,855 8 [Jotcham] in order to allow a vending machine to determine cancellation because the bank note of [Jotcham] is specifically taught to be used in banknotes in circulation for years (Col. 1, ll. 26- 28) and thus are reusable. Accordingly, the combination is not proper for this additional reason. Br. 11. Appellant’s arguments are not persuasive. First, Appellant’s contention that the teachings of [Jotcham] in the proposed combination would not operate as intended with a window on a flap, amounts to unsupported attorney argument and speculation, and thus is entitled to little, if any, weight. See In re De Blauwe, 736 F.2d 699, 705 (Fed. Cir. 1984). Second, nonobviousness cannot be established by attacking the references individually when the rejection is predicated upon a combination of prior art disclosures. See In re Merck & Co., 800 F.2d 1091, 1097 (Fed. Cir. 1986). Third, in response to Appellant’s argument, the Examiner reasons that Weinberger expressly teaches that the security elements are reversibly changed, like those of Jotcham, above a certain temperature. This creates the same reusability as that taught by Jotcham. When desired, the elements of Weinberger can be canceled by heating to a second temperature, where the change in visibility is irreversible. This could readily be incorporated into a bank note, intended to be in circulation for years as argued by [A]ppellant, and which would be canceled at the end of its useful life, as all bank notes are at some point in time. Ans. 8–9. Appeal 2012-010656 Application 11/645,855 9 The Examiner’s findings and conclusions are based on rational underpinnings. Appellant has not apprised us of error in the Examiner’s findings and conclusions. Appellant contends that “the Examiner suggests at page 3 of the Final Office Action that [Takeda] teaches temperature sensitive material throughout its specification. However, Appellant respectfully submits that [Takeda] appears to describe only light sensitive materials. Accordingly, this combination is also not proper.” Br. 11. Appellant’s argument is not persuasive. At the outset, we agree with the Examiner that “[although] Takeda’s title and primary purpose is related to light sensitive materials . . . [Takeda also] references . . . heat sensitive materials . . . throughout the specification.” Ans. 9. A reference disclosure is not limited to only its preferred embodiments, but is available for all that it discloses and suggests to one of ordinary skill in the art. In re Lamberti, 545 F.2d 747, 750 (CCPA 1976). Takeda discloses that “[t]he image forming method . . . comprises imagewise exposing to light the light-sensitive material and heating the light-sensitive material.” Takeda, col. 17, ll. 40–43 (emphasis added). Takeda further discloses that [h]eating in the heat development process can be conducted in various known manners. For example, the light-sensitive material may be placed on a hot plate or passed through heated rollers. Further, the light-sensitive material may be heated by heat radiation using an infrared lamp. Furthermore, the light-sensitive material may be immersed in a heated medium (e.g., oil). The surface of the light-sensitive material is preferably covered with an oxygen-impermeable sheet when the light-sensitive material is heated. For example, the light-sensitive layer is preferably pressed on Appeal 2012-010656 Application 11/645,855 10 the surface of the heating means. Heating temperature usually ranges from 80° C to 200° C, and preferably from 100° C to 150° C. The heating time is usually from 1 to 180 seconds, and preferably from 5 to 60 seconds. Id. at col. 18, ll. 7–21. Although Takeda describes exposing the light-sensitive material to light, Takeda also describes heating the light-sensitive material. Claims are to be given their broadest reasonable interpretation consistent with 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). Under the broadest reasonable interpretation, a skilled artisan would reasonably find that Takeda’s teaching of “heating” the light-sensitive material would be indicative of the light-sensitive material also being temperature sensitive material. As such, we disagree with Appellant that Takeda fails to teach or suggest temperature sensitive material. See Br. 11; see also Ans. 9. Appellant further contends that “[Hechinger] is not properly combined with [Jotcham] because [Jotcham] specifically teaches away from a ‘window’ across an opening in the substrate.” Id. Appellant’s argument is not persuasive. As discussed above, the disclosure of Jotcham does not teach away from Appellant’s claimed invention or from combination with an envelope as taught by Hechinger. Further, we agree with the Examiner that Jotcham discloses “the claimed window/opening structure.” Ans. 9. We also agree with the Examiner that “the combination [of Jotcham] with Hechinger [discloses] incorporating a security feature into an envelope across a window opening as claimed.” Id. Appeal 2012-010656 Application 11/645,855 11 at 7; see also id. at 6. Appellant has not provided any persuasive evidence or arguments to the contrary. Accordingly, for the foregoing reasons, the Examiner’s rejection of independent claim 11, and of claims 12–15, which fall with claim 11, as unpatentable over Jotcham, Weinberger, Takeda, and Hechinger is sustained. DECISION We AFFIRM the decision of the Examiner to reject claims 11–15 as unpatentable over Jotcham, Weinberger, Takeda, and Hechinger. No time period for taking any subsequent action in connection with this appeal may be extended under 37 C.F.R. § 1.136(a)(1)(iv). AFFIRMED Klh Copy with citationCopy as parenthetical citation