Ex Parte Sparks et al

Board of Patent Appeals and Interferences

Mar 23, 2009

09953628 (B.P.A.I. Mar. 23, 2009)

UNITED STATES PATENT AND TRADEMARK OFFICE
________________

BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
________________

Ex parte MICHAEL L. SPARKS and STEVEN L. MEYER
________________

Appeal 2008-2552
Application 09/953,628
Technology Center 2400
________________

Decided1: March 23, 2009
________________

Before ALLEN R. MACDONALD, JAY P. LUCAS, and
ST. JOHN COURTENAY III, Administrative Patent Judges.

MACDONALD, Administrative Patent Judge.

DECISION ON APPEAL
Appellants appeal under 35 U.S.C. § 134 from the Examiner’s
rejection of claims 1-20. We have jurisdiction under 35 U.S.C. § 6(b). We
reverse.

1 The two-month time period for filing an appeal or commencing a civil
action, as recited in 37 CFR § 1.304, begins to run from the decided date
shown on this page of the decision. The time period does not run from the
Mail Date (paper delivery) or Notification Data (electronic delivery).
Appeal 2008-2552
Application 09/953,628

STATEMENT OF THE CASE
According to Appellants, the invention relates to a copy protected
document that when replicated by photocopying or any scanning-type
copying device will indicate that the document is a copy.2 Claim 1 is
illustrative:
1. A copy protected document comprising:

a document having a surface for receiving printed images,

a first image indicating that a copy of the document has been
made,

said first image forming from a series of concentric circles
radiating outwardly; and,

a second image concealing said first image.

The Examiner relies on the following prior art references to show
unpatentability:
Klein US 6,209,922 B1 Apr. 3, 2001
Tsuchiya JP 406262893 A Sep. 20, 1994

1. The Examiner rejected claims 1, 6, 9, 14, 15, and 18 under 35
U.S.C. § 102(e) as anticipated by Klein.
2. The Examiner rejected claims 2-5, 7, 8, 10-13, 16, 17, 19, and 20
under 35 U.S.C. § 103(a) as unpatentable over Klein and Tsuchiya.

2 Spec. 2.
2
Appeal 2008-2552
Application 09/953,628

THE REJECTION OVER KLEIN
Appellants Contentions
With regards to representative claim 1, Appellants acknowledge that
Klein discloses a copy protected security print (App. Br. 10). However,
Appellants argue that the print of Klein "divides letters upon documents
generally in half on the basis of area, and separates the halves so that the
division is not seen by the naked eye, but can be detected by copying
equipment" (App. Br. 10). Further, Appellants contend that the print of
Klein "divides letters into a pattern of solid dots and complementary closed
rings" (App Br. 10). Appellants contend that when a copying machine scans
the print of Klein, "the resulting copy fills in the rings of this print, thus
displaying the print as a warning" (App. Br. 10).
Appellants argue that their invention differs, as their "invention
portrays an object on a document, such as the word VOID, by using
concentric circles" (App. Br. 10). Further, Appellants contend that the
letters of an object "are each formed by portions of tightly spaced concentric
circles radiating out, generally from a common phantom center”
(App. Br. 10). In addition, Appellants indicate that "[a]n individual section
of the concentric circle does not form a letter, but does form a letter when
viewed as a group" (App. Br. 10). Appellants state that "the letters can be
seen by the eye, upon the produced copy" (App. Br. 10).
Examiner's Findings and Conclusions
The Examiner found that "Klein discloses [that] the object is [a] text
forming from a series of concentric circles radiating outwardly" (emphasis
omitted) (Ans. 3). The Examiner found that Fig. 4b "illustrates an example
3
Appeal 2008-2552
Application 09/953,628

of [a] circular hollow region in a circle that meets the recitation of concentric
circles radiating outwardly" (Ans. 3). The Examiner also found that
Figs. 2a-2d illustrate "how the letter 'T' is formed from a series of concentric
circles" (Ans. 3). The Examiner found that the circles in Fig. 2d illustrate
an enlargement of each of the circles shown in Figs. 2b and 2c (Ans. 3).
Further, the Examiner concluded that the "circles in Klein as shown in figure
2d [have] the same center (from smaller circle to a larger circle starting from
the center) which meets the claimed limitation of concentric circles radiating
outwardly" (Ans. 6).
ISSUE
The issue before us, then, is whether Appellants have shown that the
Examiner erred in finding that the prior art teaches the limitations of the
independent claims. The issue turns on whether the prior art teaches a first
image forming from a series of concentric circles radiating outwardly.

FINDINGS OF FACT
1. Independent claim 1 recites "said first image forming from a series of
concentric circles radiating outwardly" (App. Br. 15).
2. Independent claim 9 recites "each of said first images forming by a
series of concentric circles radiating outwardly" (App. Br. 16).
3. Independent claim 18 recites "said first image comprising a series of
concentric lines radiating out and which indicates that a copy of the
document has been made" (emphasis added) (App. Br 17).
4. Figure 2a of Klein discloses an object "T" that overlaps with a
background pattern. As shown in Fig. 2b, the object "T" is worked into the
background pattern in the form of small rings, i.e., circles that each includes
4
Appeal 2008-2552
Application 09/953,628

a circular hollowed region. The circles that form the object "T" replace a
solid circle in the background pattern. Figure 2d illustrates the circles that
form the object "T" which are formed by "splitting" the solid circle to form a
circular hollowed region. (See Klein, col. 4, ll. 52-67; FIGS. 2a-2d).

PRINCIPLES OF LAW
Claims must "particularly point out . . . the subject matter which the
applicant regards as his invention." 35 U.S.C. § 112, second paragraph.
“[T]he PTO gives claims their ‘broadest reasonable interpretation.”’
In re Bigio, 381 F.3d 1320, 1324 (Fed. Cir. 2004) (quoting In re Hyatt, 211
F.3d 1367, 1372 (Fed. Cir. 2000)). During patent examination, claims are
given their broadest reasonable interpretation in light of the specification as
it would be interpreted by skilled artisans. Phillips v. AWH Corp., 415 F.3d
1303, 1316 (Fed. Cir. 2005) (en banc) (citations omitted).
In rejecting claims under 35 U.S.C. § 102, “[a] single prior art
reference that discloses, either expressly or inherently, each limitation of a
claim invalidates that claim by anticipation.” Perricone v. Medicis
Pharmaceutical Corp., 432 F.3d 1368, 1375 (Fed. Cir. 2005), citing Minn.
Mining & Mfg. Co. v. Johnson & Johnson Orthopaedics, Inc., 976 F.2d
1559, 1565 (Fed. Cir. 1992).
Analysis of whether a claim is patentable over the prior art under 35
U.S.C. § 102 begins with a determination of the scope of the claim. 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
construction in light of the specification as it would be interpreted by one of
ordinary skill in the art. See In re Am. Acad. of Sci. Tech. Ctr., 367 F.3d
5
Appeal 2008-2552
Application 09/953,628

1359, 1364 (Fed. Cir. 2004). The properly interpreted claim must then be
compared with the prior art.
In rejecting claims under 35 U.S.C. § 103, it is incumbent upon the
Examiner to establish a factual basis to support the legal conclusion of
obviousness. See In re Fine, 837 F.2d 1071, 1073 (Fed. Cir. 1988). In so
doing, the Examiner must make the factual determinations set forth in
Graham v. John Deere Co., 383 U.S. 1, 17 (1966).
If the Examiner’s burden is met, the burden then shifts to the
Appellants to overcome the prima facie case with argument and/or evidence.
Obviousness is then determined on the basis of the evidence as a whole and
the relative persuasiveness of the arguments. See In re Oetiker, 977 F.2d
1443, 1445 (Fed. Cir. 1992).

ANALYSIS
CLAIMS 1, 6, 9, 14, 15. and 18
Claim Construction
Representative claim 1 recites "said first image forming from a series
of concentric circles radiating outwardly" (App. Br. 15). "[T]he PTO gives
claims their 'broadest reasonable interpretation.'" In re Bigio at 1324. Here,
we interpret "a series of concentric circles radiating outwardly," to mean that
the series of concentric circles, collectively (i.e., as a group), radiate
outwardly from a single central point.
Based on the aforementioned claim construction, we find that Klein
does not teach "a series of concentric circles radiating outwardly" that form
a first image. While Klein teaches (1) a circle combination that is formed
from one circle that is inside of another circle; (2) that rows of the individual
6
Appeal 2008-2552
Application 09/953,628

circle combinations are utilized to form the object "T"; and (3) each of the
individual circle combinations radiate outwardly (See FF 4), Klein fails to
teach that the circle combinations in a series, i.e., collectively, radiate
outwardly to form the object "T".
Accordingly, Klein fails to teach "said first image forming from a
series of concentric circles radiating outwardly," as recited in representative
claim 1. Therefore, for the foregoing reasons, the Examiner's rejection of
representative claim 1, and claims 2-8 which depend from independent claim
1, is reversed.
Independent claim 9 is commensurate in scope with independent
claim 1, as claim 9 recites "each of said first images forming by a series of
concentric circles radiating outwardly" (FF 2). Therefore, for the foregoing
reasons found above, with regard to representative claim 1, the Examiner's
rejection of independent claim 9, and claims 10-17 which depend from
independent claim 9, is reversed.3
Independent claim 18 recites "said first image comprising a series of
concentric lines radiating out and which indicates that a copy of the
document has been made" (FF 3). Unlike representative claim 1, claim 18
recites "concentric lines" rather than "concentric circles." However, we find
that one of ordinary skill in the art would have recognized that "concentric
lines" are circles. Thus, we find independent claim 18 is commensurate in
scope with representative claim 1. Therefore, for the reasons discussed
above with regard to representative claim 1, the Examiner's rejection of
independent claim 18, along with claims 19 and 20 which depend from
claim 18, is reversed.

3 Appellants argue claims 1, 9 and 18 together.
7
Appeal 2008-2552
Application 09/953,628

THE REJECTION OVER KLEIN AND TSUCHIYA
CLAIMS 2-5, 7, 8, 10-13, 16, 17, 19, AND 20
The Examiner rejected claims 2-5, 7, 8, 10-13, 16, 17, 19 and 20
under 35 USC § 103(a) as obvious. Each of the claims rejected under
35 USC § 103(a) is a dependent claim, as (1) claims 2-5 and 7-8 depend
from independent claim 1; (2) claims 10-13, 17 and 17 depend from
independent claim 9; and (3) claims 19 and 20 depend from independent
claim 18.
As found above, we are persuaded by Appellants’ argument that Klein
fails to teach "said first image forming from a series of concentric circles
radiating outwardly." Thus, the absence of the foregoing limitation from
Klein in the independent claims on appeal, i.e., claims 1, 9, and 18,
overcomes the Examiner’s final conclusion of obviousness. Further, we find
that Tsuchiya does not remedy the deficiencies of Klein. Therefore, we
reverse the obviousness rejection of claims 2-5, 7, 8, 10-13, 16, 17, 19, and
20.

CONCLUSIONS OF LAW
We conclude that the Appellants have shown that the Examiner erred
in rejecting claims 1, 6, 9, 14, 15, and 18 under 35 U.S.C. § 102(e) and
claims 2-5, 7, 8, 10-13, 16, 17, 19, and 20 under 35 U.S.C. § 103(a).

DECISION
We reverse the Examiner's rejections with respect to all claims on
appeal.
8
Appeal 2008-2552
Application 09/953,628

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).

REVERSED

pgc

PAUL M. DENK
763 South New Ballas Rd.
St. Louis, MO 63141
9