Ex Parte Zercher

Board of Patent Appeals and Interferences

Jun 24, 2009

11478533 (B.P.A.I. Jun. 24, 2009)

UNITED STATES PATENT AND TRADEMARK OFFICE
_________

BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
__________

Ex parte JOHN MICHAEL ZERCHER
__________

Appeal 2009-001652
Application 11/478,533
Technology Center 1700
___________

Decided:1 June 24, 2009
___________

Before ADRIENE LEPIANE HANLON, JEFFREY T. SMITH, and
MICHAEL P. COLAIANNI, Administrative Patent Judges.

HANLON, Administrative Patent Judge.

DECISION ON APPEAL

1 The two-month time period for filing an appeal or commencing a civil
action, as recited in 37 C.F.R. § 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 Date (electronic delivery).
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A. STATEMENT OF THE CASE
This is an appeal under 35 U.S.C. § 134 from an Examiner’s decision
rejecting claims 1-20. We have jurisdiction under 35 U.S.C. § 6(b). We
AFFIRM.
The subject matter on appeal is directed to a security feature
comprising a first foil section having a first sheen reflecting light from a
surface of the first foil and a second foil having a sheen reflecting light from
a surface of the second foil wherein the sheen of the second foil is different
from the sheen of the first foil.
Claims 1 and 5, reproduced below, are representative of the subject
matter on appeal.
1. An improved security feature comprising:

a substrate having a surface;

a first foil section being applied to the surface of the substrate,
the first foil having a first sheen reflecting light from a surface
of the first foil; and

a second foil having a shape in the form of an image and
applied over only a portion of the surface of the first foil, the
second foil having a sheen reflecting light from a surface of the
second foil, wherein the sheen of the second foil is different
from the sheen of the first foil providing a light reflective
contrast between the first foil and the shape of the second foil.

5. The security feature of claim 1 wherein the substrate is a
polyolefin.

App. Br., Claim Appendix A-1, A-2.2

2 Appeal Brief dated January 18, 2008.
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The following Examiner’s rejections are before us on appeal:
(1) Claims 5 and 16 are rejected under 35 U.S.C. § 112, first
paragraph, based on the written description requirement.
(2) Claims 1-4, 7-15, and 18-20 are rejected under 35 U.S.C.
§ 102(b) as anticipated by Rich.3
(3) Claims 5 and 16 are rejected under 35 U.S.C. § 103(a) as
unpatentable over the combination of Rich and Chang.4
(4) Claims 6 and 17 are rejected under 35 U.S.C. § 103(a) as
unpatentable over the combination of Rich and McGrew.5
B. ISSUES
(1) Has the Appellant shown reversible error in the Examiner’s
finding that claim 5, reciting that “the substrate is a polyolefin,” is not
supported by the original disclosure of the instant application?
(2) Has the Appellant shown reversible error in the Examiner’s
finding that Rich describes a “second foil having a sheen reflecting light
from a surface of the second foil” as recited in claim 1?
C. FINDINGS OF FACT
The following findings of fact are supported by a preponderance of
the evidence. Additional findings of fact as necessary appear in the Analysis
portion of the opinion.
1. Appellant’s Specification
Referring to Figure 1, a substrate 20 is provided for receiving images,
text, and security features on both or either of its major surfaces 22, 24. A

3 US 5,981,040 issued November 9, 1999 to Rich et al.
4 US 6,162,485 issued December 19, 2000 to Chang.
5 US 4,758,296 issued July 19, 1988 to McGrew.
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first foil section 30 is applied on the first major surface 22 and a second foil
section 40 is applied over the first foil section 30. Spec. 3:18-21.
The substrate 20 may consist of known PVC materials, TESLIN, or
other suitable substrates for creating an identification card, credit card, or
other media. Substrate 20 may include other materials, such as paper or
other plastics, which may be utilized in creating passports, secured
documents, or other media. The substrate material “is only limited to a
group of materials which is suitable for applying a foil or foil transfer
thereon.” Spec. 4:2-7.
A typical foil material is commercially available from API foils or
Crown Roll Leaf and sold under trade names Holografx™ and Holofoil®.
However, “while these are suitable foil materials, the invention is not limited
to their use and any transferable foil material may be utilized.” Spec. 4:16-
19; see also Spec. 5:4-5.
The second foil section 40 is applied within the area of the first foil
section 30 and takes the shape of an image, pattern, text, logo, or insignia.
Spec. 5:5-7.
2. Rich
Rich Figure 3 shows a card 50 that integrates ink layers and coatings
to enhance the security and durability of the card. Rich 5:29-32.
A metallic ink 54 is coated on top of base 52 of card 50. Rich 5:37-
40; see also Rich 3:16-36.
A “second scratch-off coating 72” is positioned over a portion of the
surface of the metallic ink. See Rich Fig. 3. The coating 72 is “an opaque,
solvent-soluble synthetic rubber containing predominantly metal particles
and black pigment.” Rich 6:12-15.
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Rich discloses that a metallic ink could be printed on top of scratch-
off coating 72 and impressed with a holographic image. Rich 6:34-35.
D. PRINCIPLES OF LAW
The test for determining compliance with the written description
requirement of 35 U.S.C. § 112, first paragraph, is whether the disclosure of
an application, as originally filed, reasonably conveys to one of ordinary
skill in the art that the inventor had possession at that time of the later
claimed subject mater. In re Kaslow, 707 F.2d 1366, 1375 (Fed. Cir. 1983).
“[T]he invention claimed does not have to be described in ipsis verbis
in order to satisfy the description requirement of § 112.” In re Lukach, 442
F.2d 967, 969 (CCPA 1971). However, the description must be sufficiently
clear that one of ordinary skill in the art would have recognized from the
disclosure that the applicant invented the later claimed subject matter. In re
Wertheim, 541 F.2d 257, 262 (CCPA 1976).
The test for determining compliance with the written description
requirement “is not whether a claimed invention is an obvious variant of that
which is disclosed in the specification.” Lockwood v. American Airlines,
107 F.3d 1565, 1572 (Fed. Cir. 1997).
During patent examination, the pending claims must be interpreted as
broadly as their terms reasonably allow. In re Zletz, 893 F.2d 319, 321 (Fed.
Cir. 1989). That being said, claims cannot be read in a vacuum, but instead
must be read in the light of the Specification. In re Prater, 415 F.2d 1393,
1404 (CCPA 1969); see also Vitronics Corp. v. Conceptronic, Inc., 90 F.3d
1576, 1582 (Fed. Cir. 1996).
When construing claim terms, judges may rely on dictionary
definitions so long as the dictionary definition does not contradict any
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definition found in or ascertained by reading the Specification. Vitronics, 90
F.3d at 1584 n.6.
E. ANALYSIS
1. Issue (1)6
The Examiner found that claim 5, reciting that “the substrate is a
polyolefin,” is a broad limitation that is not supported by the original
disclosure of the instant application. Ans. 4.7
There is no dispute that the subject matter of claim 5 is not described
in ipsis verbis in the original disclosure. However, the Appellant relies on
page 4, lines 2-7 of the Specification to establish that “the disclosure would
immediately convey to any person skilled in the art that the applicant was in
possession of the claimed invention in which the substrate was a polyolefin.”
App. Br. 4.
The Specification discloses that the substrate “may consist of known
PVC materials, TESLIN, or other suitable substrates.” Spec. 4:2-3. A
Material Safety Data Sheet for TESLIN®, submitted by the Appellant,
discloses that TESLIN® is comprised of polyethylene, which is a
polyolefin.8
Based on this evidence, the Appellant argues that the Specification
“would immediately convey the knowledge that the applicant invented a
security device that could have a polyolefin substrate regardless of the
specific polyolefin selected.” App. Br. 4. Further, citing In re Smythe, 480

6 The Appellant argues the patentability of claims 5 and 16 as a group. Thus,
as to issue (1), we decide the appeal on the basis of claim 5. See 37 C.F.R.
§ 41.37(c)(1)(vii) (2007).
7 Examiner’s Answer dated March 5, 2008.
8 A copy of the Material Safety Data Sheet is included in Appendix B of the
Appeal Brief.
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F.2d 1376, 1384 (CCPA 1973), the Appellant argues that the written
description requirement should not be so burdensome as to prohibit an
applicant from claiming “undisclosed, but obviously art-recognized
equivalent[s]” of expressly disclosed aspects of an invention. App. Br. 3.
The Appellant’s arguments are not persuasive of reversible error. In
Smythe, the issue was whether the original disclosure described an “inert
fluid” for use as a segmentizing medium. Smythe, 480 F.2d at 1382. The
court explained:
Here . . . where the broader concept of using “inert fluid”
would naturally occur to one skilled in the art from reading
appellants’ description of the use and functions of the
segmentizing media specifically described, we see no basis for
denying appellants the claims which recite the segmentizing
medium broadly as an “inert fluid.” . . .
We are not saying that the disclosure of “air or other gas
which is inert to the liquid” sample by itself is a description of
the use of all “inert fluid” media. Rather, it is the description of
the properties and functions of the “air or other gas”
segmentizing medium described in appellants’ specification
which would suggest to a person skilled in the art that
appellants’ invention includes the use of “inert fluid” broadly.

Id. at 1384 (emphasis in original).
In this case, the Appellant has failed to direct us to any description of
the properties and functions of “PVC materials, TESLIN, or other suitable
substrates” in the Specification that would suggest to one of ordinary skill in
the art that the Appellant’s invention includes the use of the broad class of
polyolefin substrates.
We note that the Specification does disclose that the substrate material
“is only limited to a group of materials which is suitable for applying a foil
or foil transfer thereon.” Spec. 4:6-7. However, the Appellant has failed to
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direct us to any evidence establishing that polyolefins, as a class, would be
suitable substrates for applying a foil or foil transfer thereon.
In sum, the Appellants have failed to show reversible error in the
Examiner’s finding that the subject matter of claim 5 is not supported by the
original disclosure of the instant application.
2. Issue (2)9
The Examiner found that Rich discloses a security feature comprising
a substrate, a first foil section, and a second foil. Ans. 4. The Examiner
found that the second foil is a scratch-off coating comprising an opaque,
black layer that contains predominantly metal particles and black pigment.
Ans. 5; Rich 6:9-22.
The Appellant argues that the scratch-off coating disclosed in Rich is
not a foil. For support, the Appellant relies on The American Heritage
Dictionary of the English Language 704 (3rd ed. 1996),10 which defines
“foil” as a “thin, flexible leaf or sheet of metal.” The Appellant argues that
“[a] rubber solution containing metal particles as described in Rich is not a
foil under this definition.” App. Br. 5.
The Examiner, on the other hand, relies on the Oxford English
Dictionary (2nd ed. 1989)11 which defines “foil” as “By analogy: Anything
flat and thin” or “[a] thin layer (of any material), a leaf, paring.” Based on

9We confine our discussion to claim 1, which contains claim limitations
representative of the arguments made by Appellant pursuant to 37 C.F.R.
§ 41.37(c)(1)(vii). The Appellant has not presented separate arguments for
rejections (3) and (4). See App. Br. 8-9. Therefore, we have considered
these grounds of rejection based on the arguments advanced in support of
the patentability of claim 1.
10 Included in Appendix B of the Appeal Brief.
11 Included in Appendix B of the Appeal Brief.
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these definitions, the Examiner found that the scratch-off coating disclosed
in Rich is a foil within the scope of claim 1. Ans. 10.
The Appellant argues that “it is clear from both the content of the
specification, the state of the art, and the prosecution history” that the term
“foil” would not include the coating disclosed in Rich. App. Br. 6. In
particular, the Appellant argues:
The specification indicates that the problem being addressed by
this invention is the creation of a holographic image which
provides a high level of security. See page 2, lines 8-28. As
used in the specification, an opaque rubber would fail to
produce the holographic image produced by the invention. On
page 4, lines 16-21 of Applicant’s specification, typical foil
materials are described, each of them having a high degree of
light reflection from their surface, something that is not found
in the opaque rubber of Rich.

App. Br. 6.
The Appellant’s arguments are not persuasive of reversible error.
Neither the Specification nor claim 1 requires the second foil to produce a
holographic image. The portion of the Specification relied on by the
Appellant discusses security features of the prior art. In particular, the
Specification discloses that “[t]he creation of holographic images is a
relatively expensive method for producing security features” and indicates
that “a security feature which simulates the level of security provided by a
holographic image” is needed. Spec. 2:8-14 (emphasis added). Further,
neither the Specification nor claim 1 requires the second foil to have a high
degree of light reflection from its surface.
The Specification discloses that a “typical” foil material is sold under
the trade names Holografx™ and Holofoil®. However, the Specification does
not limit the second foil to this particular material. The Specification
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discloses that “any transferable foil material may be utilized.” Spec. 4:18-
19. The Specification also discloses that the second foil “takes a shape of an
image, pattern, text, logo or insignia.” Spec. 5:5-7. The Specification does
not otherwise define the term “second foil.”
The Appellant has failed to demonstrate that the definitions of “foil”
relied on by the Examiner contradict this disclosure. Vitronics, 90 F.3d at
1584 n.6. Thus, based on the record before us, we conclude that the term
“second foil,” as used in the Specification, is broad enough to include “[a]
thin layer (of any material)” that is transferable and can take the shape of an
image, pattern, text, logo, or insignia. See Ans. 10.
The Appellant does not dispute that the coating disclosed in Rich is a
thin layer of material. Furthermore, the Appellant has failed to direct us to
any evidence establishing that the coating disclosed in Rich is not
transferable and could not take one of the shapes disclosed in the
Specification. Thus, it is reasonable to find that the coating disclosed in
Rich is a “foil,” and more particularly, a “second foil” within the scope of
claim 1.
Claim 1 also recites that the second foil has “a sheen reflecting light
from a surface of the second foil, wherein the sheen of the second foil is
different from the sheen of the first foil providing a light reflective contrast
between the first foil and the shape of the second foil.”12 App. Br., Claim
Appendix A-1.
The Appellant argues that the coating of Rich has metal particles that
“are embedded within the rubber and are covered in a black pigment.” Thus,

12 Claim 1 does not otherwise limit the sheen of the second foil or the
reflective contrast between the first and second foils.
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the Appellant argues that the coating of Rich does not have a sheen that
reflects light. App. Br. 7.
The Appellant’s argument is not persuasive of reversible error. Rich
does not disclose that the metal particles are “embedded” within the rubber
and “covered in a black pigment.” Instead, Rich discloses that the coating
contains “predominantly metal particles and black pigment.” Rich 6:12-15.
Rich does not expressly disclose that the coating has a sheen.
However, given the predominance of the metal particles, the Examiner
found that the coating of Rich would have a sheen that reflects light to some
degree. Ans. 12, 13.
The Examiner’s finding is reasonable based on the record before us.
Significantly, the Appellant has failed to establish that a coating, such as the
coating of Rich, containing “predominantly metal particles and black
pigment,” would not have a sheen that reflects some degree of light from its
surface.
In sum, the Appellant has not shown reversible error in the
Examiner’s finding that Rich describes a “second foil having a sheen
reflecting light from a surface of the second foil” as recited in claim 1.
F. DECISION
The decision of the Examiner is affirmed.
No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. § 1.136(a).

AFFIRMED

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PL Initial:
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