Ex Parte Teitelbaum et al

Patent Trial and Appeal Board

Aug 29, 2013

11075657 (P.T.A.B. Aug. 29, 2013)

UNITED STATES PATENT AND TRADEMARK OFFICE
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BEFORE THE PATENT TRIAL AND APPEAL BOARD
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Ex parte NEIL TEITELBAUM and MATTHEW FAWCETT
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Appeal 2011-006503
Application 11/075,657
Technology Center 3700
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Before EDWARD A. BROWN, LYNNE H. BROWNE and
ANNETTE R. REIMERS, Administrative Patent Judges.

REIMERS, Administrative Patent Judge.

DECISION ON APPEAL

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STATEMENT OF THE CASE
Neil Teitelbaum and Matthew Fawcett (Appellants) appeal under 35
U.S.C. § 134(a) from the Examiner’s decision to reject claims 1-5 under 35
U.S.C. § 103(a) as unpatentable over Berning (US 4,705,300, iss. Nov. 10,
1987), Joubert (US 6,873,443 B1, iss. Mar. 29, 2005) and Boehm (US
4,897,300, iss. Jan. 30, 1990). Claims 12 and 13 have been withdrawn.
Claims 6-11 have been canceled. We have jurisdiction under 35 U.S.C. §
6(b). We REVERSE.
THE INVENTION
Appellants’ invention “relates to an article having a security device
and having one or more symbols or indicia that can be copied for identifying
and authenticating the security device.” Spec. para. [1]; fig. 6. Claims 1 and
5 are independent.
Claim 1 is illustrative of the subject matter on appeal and is
reproduced below:
1. An authenticating instrument comprising:
a substrate;
a security authenticating color-shifting
coating supported by the substrate and being
responsive to a visible light source, wherein the
color-shifting coating exhibits a visible color-shift
from a first color to only a second different color
as the substrate is tilted or as an angle of incident
light upon the color-shifting coating changes when
irradiated by the visible light source; and
indicia supported by the substrate
simultaneously visible with the color-shifting
coating when irradiated by the visible light source
for verifying at least one of the first and second
colors, wherein the indicia includes an indication
of the first and second colors.
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ANALYSIS
Non-Functional Descriptive Matter
In the Response to Arguments section of the Examiner’s Answer, the
Examiner takes the position that “[w]ith respect to the indicia for verifying
at least one color of the security element, this indicia is not functional with
the substrate.” Ans. 8. In the Reply Brief, Appellants counter that (1) “both
the security authenticating color-shifting coating and the indicia are clearly
functional with the substrate for at least the reason that they cooperate
together with the substrate for the function of authenticating it;” and (2) “the
color shifting coating and the indicia cooperate together like a lock and key
for the substrate, wherein authentication and verification are provided for the
substrate. This is a clear functional relationship between the indicia
and the substrate that cannot simply be reduced to ‘printed matter[.]’” Reply
Br. 5. We agree.
The indicia of the subject invention define the locations of the colors
of the security authenticating color-shifting coating on the substrate and
function to verify the colors of the color-shifting coating on the substrate,
thus authenticating the substrate. Hence, the indicia are very much
functionally related to the security authenticating color-shifting coating and
the substrate. Thus, the Examiner erred in characterizing the indicia as non-
functional descriptive matter.
Obviousness over Berning, Joubert and Boehm
Independent claim 1 recites, “indicia supported by the substrate
simultaneously visible with the color-shifting coating when irradiated by the
visible light source for verifying at least one of the first and second colors.”
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App. Br., Clms. App’x (emphasis added). Claim 5 recites similar claim
language. Id.
Appellants contend that the combined teachings of Berning, Joubert
and Boehm fail to teach or suggest
an indicia simultaneously visible with the color
shifting coating for verifying at least one of the
two different colors and which therefore can
provide an indication to a user of the presence and
functionality of the security authenticating feature
(i.e., the color shifting coating), wherein both the
color shifting coating and the indicia are visible in
ordinary visible light.
Reply Br. 4. We agree. As discussed above, the claims require that the
color verifying indicia are visible “when irradiated by [a] visible light
source.” The Examiner acknowledges that Berning as modified by Joubert
fails to teach or suggest “particular permanent indicia which relates the
colors of a security element that is visible in normal light.” Ans. 5. We
recognize the Examiner’s position regarding Boehm’s disclosure that
“security elements comprised only of colors are very well known to be
verified with the use of permanent indicia matching the colors of those
security elements.” Id. However, as acknowledged by the Examiner,
Boehm discloses that its security thread (color verifying indicia) cannot be
seen by a visible light source and requires UV light to be visible. Id. See
also Boehm, col. 1, ll. 44-46, 52-54; col. 2, ll. 44-46. As such, we see no
reason why one having ordinary skill in the art would incorporate the
security thread (color verifying indicia) of Boehm in the financial document
of Berning as modified by Joubert. In other words, the Examiner has not
provided any persuasive evidence or technical reasoning as to why a person
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having ordinary skill in the art would have looked to combine the teachings
of Berning, Joubert and Boehm to provide color verifying indicia that are
visible “when irradiated by [a] visible light source,” as called for by the
claims. Moreover, we find that the teachings of Boehm would have
discouraged a person of ordinary skill in the art from providing a security
thread (color verifying indicia) to the financial document of Berning as
modified by Joubert. Thus, the combined teachings of Berning, Joubert and
Boehm, as proposed by the Examiner, would not have been obvious to a
person having ordinary skill in the art.
Accordingly, for the foregoing reasons, the Examiner’s rejection of
independent claim 1 and its respective dependent claims and independent
claim 5 as unpatentable over Berning, Joubert and Boehm cannot be
sustained.
DECISION
We REVERSE the decision of the Examiner as to claims 1-5.

REVERSED

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