Funada, Hitoshi

Patent Trials and Appeals Board

Jan 21, 2020

13363264 - (D) (P.T.A.B. Jan. 21, 2020)

UNITED STATES PATENT AND TRADEMARK OFFICE
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.
13/363,264 01/31/2012 Hitoshi Funada 96790P690 3116
8791 7590 01/21/2020
WOMBLE BOND DICKINSON (US) LLP
ATTN: IP DOCKETING
P.O. BOX 7037
ATLANTA, GA 30357-0037
EXAMINER
NGUYEN, QUANG X.L.
ART UNIT PAPER NUMBER
2854
NOTIFICATION DATE DELIVERY MODE
01/21/2020 ELECTRONIC
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.
Notice of the Office communication was sent electronically on above-indicated "Notification Date" to the
following e-mail address(es):
IPDocketing@wbd-us.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte HITOSHI FUNADA
Appeal 2018-005409
Application 13/363,264
Technology Center 2800
Before ALLEN R. MacDONALD, CAROLYN D. THOMAS, and
DAVID J. CUTITTA II, Administrative Patent Judges.
CUTITTA, Administrative Patent Judge.
DECISION ON APPEAL
STATEMENT OF THE CASE
Pursuant to 35 U.S.C. § 134(a), Appellant1 appeals from the
Examiner’s decision to reject claims 1–10, all of the pending claims. We
have jurisdiction under 35 U.S.C. § 6(b). Oral arguments were heard on
January 13, 2020. A transcript of that hearing will be added to the record in
due time.
We REVERSE.

1 We use the word Appellant to refer to “applicant” as defined in 37 C.F.R.
§ 1.42(a). Appellant identifies the real party in interest as Komori
Corporation. Appeal Br. 3.
Appeal 2018-005409
Application 13/363,264

2
CLAIMED SUBJECT MATTER
Appellant’s claimed invention relates to “an offset printing press for
printing securities.” Spec. 1:6–7.2 The claimed invention, “in addition to
determining the printing quality of a ground tint pattern, prior to the printing
of the ground tint pattern, determines the quality of an anticounterfeit means
applied to the paper prior to being introduced to the offset printing press.”
Reply Br. 2. According to Appellant, “[t]his ensures that the printed paper
sheets have a high print quality and a high anticounterfeit means quality.”
Id.
Independent claim 1 is reproduced below with limitations at issue
emphasized and is illustrative of the claimed subject matter:
1. An offset printing press for printing securities,
comprising:
an offset printing unit which prints, by an offset printing,
a ground tint pattern on a transported paper sheet which
includes an anticounterfeit means before being introduced to the
offset printing press;
an inspection camera unit which is arranged upstream of
said offset printing unit in a direction in which the paper sheet
is transported, and captures an image of the paper sheet before
the ground tint pattern is printed; and
a sheet quality determination unit which determines a
quality of the paper sheet on which no ground tint pattern is

2 Throughout this Decision we refer to: (1) Appellant’s Specification filed
January 31, 2012 (“Spec.”); (2) the Final Office Action (“Final Act.”)
mailed February 24, 2017; (3) the Appeal Brief filed September 21, 2017
(“Appeal Br.”); and (4) the Examiner’s Answer (“Ans.”) mailed March 9,
2018; and (5) the Reply Brief filed May 2, 2018 (“Reply Br.”).
Appeal 2018-005409
Application 13/363,264

3
printed by inspecting a quality of the anticounterfeit means
based on image data output from said inspection camera unit,
a printing quality camera which is arranged downstream
of said offset printing unit in the direction in which the paper
sheet is transported, and captures an image of the paper sheet on
which the ground tint pattern is printed by said offset printing
unit; and
a printing quality determination unit which determines a
printing quality of the ground tint pattern on the paper sheet
based on image data output from said printing quality camera.

Appeal Br. 14 (Claims Appendix).

REFERENCES
The references3 relied upon by the Examiner are:
Name Reference Date
Ishida et al. US 6,241,243 B1 June 5, 2001
Reinhard et al. US 2006/0208412 A1 Sept. 21, 2006
Takenouchi et al. US 2007/0012207 A1 Jan. 18, 2007
Saito et al. US 2008/0229949 A1 Sept. 25, 2008
Kamijo US 7,569,825 B2 Aug. 4, 2009
Ono et al. JP 2001-125229 May 17, 1989
Ishimoto et al. JP 2007-251400 A Sept. 27, 2007

REJECTIONS
The Examiner rejects claims 1, 2, 4, and 5 under 35 U.S.C. § 103(a) as
unpatentable over Ono, Reinhard, and Ishimoto. Final Act. 2–4.

3 All citations to the references use the first-named inventor only.
Appeal 2018-005409
Application 13/363,264

4
The Examiner rejects claim 3 under 35 U.S.C. § 103(a) as
unpatentable over Ono, Reinhard, Ishimoto, and Kamijo. Id. at 5.
The Examiner rejects claim 6 under 35 U.S.C. § 103(a) as
unpatentable over Ono, Reinhard, Ishimoto, and Ishida. Id. at 5–6.
The Examiner rejects claims 7 and 8 under 35 U.S.C. § 103(a) as
unpatentable over Ono, Reinhard, Ishimoto, and Saito. Id. at 6–8.
The Examiner rejects claims 9 and 10 under 35 U.S.C. § 103(a) as
unpatentable over Ono, Reinhard, Ishimoto, and Takenouchi. Id. at 8–9.

OPINION
We review the appealed rejections for error based upon the issues
identified by Appellant and in light of Appellant’s arguments and evidence.
Ex parte Frye, 94 USPQ2d 1072, 1075 (BPAI 2010) (precedential).
Arguments not made are waived. See 37 C.F.R. § 41.37(c)(1)(iv).
Independent claim 1 recites, in part, “an inspection camera unit which
… captures an image of the paper sheet before the ground tint pattern is
printed” and “a sheet quality determination unit which determines a quality
of the paper sheet on which no ground tint pattern is printed by inspecting a
quality of the anticounterfeit means based on image data output from said
inspection camera unit.” The Examiner finds Reinhard’s “inspection
module 31, which includes inspection device A and UV inspection device
B” teaches or suggests the claimed inspection camera unit. Final Act. 3
(citing Reinhard ¶¶ 79, 94, 95, Fig. 2). The Examiner finds Reinhard’s
computer, which determines a sheet quality by checking fluorescence in
sheets based on input from UV inspection device B, teaches or suggests the
claimed sheet quality determination unit. Id. (citing Reinhard ¶ 95).
Appeal 2018-005409
Application 13/363,264

5
Appellant acknowledges the Specification’s “list of anti counterfeit
means can be construed as open-ended, and could theoretically include
[detecting] a fluorescent material which reacts when exposed to UV light,”
as discussed in Reinhard. Reply Br. 3 (citing Spec. 5:2–7). Accordingly,
Appellant acknowledges that under a broadest reasonable interpretation,
Reinhard’s UV inspection device B for detecting fluorescence teaches or
suggests an anti-counterfeit means. Appellant, however, argues that
Reinhard does not teach determining a sheet quality by inspecting a quality
of an anticounterfeit means by using an inspection camera unit before
printing of a ground tint pattern because Reinhard detects fluorescense after
the ground tint pattern has been printed. See Appeal Br. 3; Reply Br. 4
(“Thus, even if under the broadest reasonable interpretation standard, the
claimed anti counterfeit means is construed to include a fluorescent material,
is clear that Reinhard’s fluorescence technique is not added prior to
printing.”).
We find Appellant’s argument persuasive. Claim 1 requires that the
paper sheet include “an anticounterfeit means before being introduced to the
offset printing press.” Appeal Br. 14. Claim 1 also requires that the
inspection camera unit “captures an image of the paper sheet before the
ground tint pattern is printed” and the sheet quality determination unit . . .
determines a quality of the paper sheet on which no ground tint pattern is
printed by inspecting a quality of the anticounterfeit means.” Id. (emphasis
added). The Examiner, however, has not shown that Reinhard’s UV
inspection device B detects fluorescence before printing of a ground tint
pattern. Ans. 4. To the contrary, as argued by Appellant, “Reinhard
discloses determining a sheet quality by inspecting a quality of a printed
Appeal 2018-005409
Application 13/363,264

6
image.” Appeal Br. 10. For example, Reinhard discloses that the sheets are
preprinted before introduction to sheet feeder 01. Reinhard ¶ 88. Reinhard
further discloses “[a] computer . . . which is connected to the camera 38
compares the image of the sheet recorded by the camera with a desired
printed image stored in electronic form, and decides whether the
correspondence between the detected printed image and the desired printed
image is good enough.” Reinhard ¶ 95 (emphasis added). Reinhard’s
fluorescense detection by UV inspection device B occurs immediately after
the printed image detection of camera 38. Reinhard ¶ 95, Fig. 2. Because
Reinhard’s fluorescence detection by UV inspection device B is performed
on sheets already having a printed ground tint pattern, we agree with
Appellant that Reinhard fails to teach inspecting a quality of an
anticounterfeit means before printing of the ground tint pattern.
Because we agree with at least one of the dispositive arguments
advanced by Appellant for claim 1, we need not reach the merits of
Appellant’s other arguments. Accordingly, based on the record before us,
we do not sustain the Examiner’s 35 U.S.C. § 103(a) rejection of
independent claim 1, and, for the same reasons, of dependent claims 2–9.

CONCLUSION
We reverse the Examiner’s rejections of claims 1–10 under 35 U.S.C.
§ 103(a).
Appeal 2018-005409
Application 13/363,264

7
DECISION SUMMARY
In summary:
Claims
Rejected
35 U.S.C. § Reference(s)/Basis Affirmed Reversed
1, 2, 4, 5 103(a) Ono, Reinhard, Ishimoto 1, 2, 4, 5
3 103(a) Ono, Reinhard, Ishimoto,
Kamijo
3
6 Ono, Reinhard, Ishimoto,
Ishida
6
7, 8 Ono, Reinhard, Ishimoto,
Saito
7, 8
9, 10 Ono, Reinhard, Ishimoto,
Takenouchi
9, 10
Overall
Outcome
1–10

REVERSED