Johann Kecht et al.

Patent Trials and Appeals Board

Feb 18, 2021

2019005833 (P.T.A.B. Feb. 18, 2021)

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.
13/997,247 06/22/2013 Johann Kecht 19838.77 3400
22913 7590 02/18/2021
Workman Nydegger
60 East South Temple
Suite 1000
Salt Lake City, UT 84111
EXAMINER
LEE, SHUN K
ART UNIT PAPER NUMBER
2884
NOTIFICATION DATE DELIVERY MODE
02/18/2021 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):
Docketing@wnlaw.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte JOHANN KECHT and KAI UWE STOCK
Appeal 2019-005833
Application 13/997,247
Technology Center 2800
Before JOHN A. JEFFERY, LARRY J. HUME, and
CARL L. SILVERMAN, Administrative Patent Judges.
HUME, Administrative Patent Judge.
DECISION ON APPEAL
Pursuant to 35 U.S.C. § 134(a), Appellant1 appeals from the
Examiner’s decision rejecting claims 16–18, 20–32, 35–38, 40, and 41,
which are all claims pending in the application. Appellant has canceled
claims 1–15, 19, 33, 34, and 39. See Appeal Br. 28 et seq. (Claims App.).
We have jurisdiction under 35 U.S.C. § 6(b).
We REVERSE.

1 We use the term “Appellant” to refer to “applicant” as defined in 37 C.F.R.
§ 1.42. Appellant identifies the real party in interest as GIESECKE
DEVRIENT CURRENCY TECHNOLOGY GMBH. Appeal Br. 2.
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STATEMENT OF THE CASE2
The claims are directed to a security feature. See Spec. (Title). In
particular, Appellant’s disclosed embodiments and claimed “invention
relate[] to a security feature and a method for checking the security feature.
Such security features are used for safeguarding value documents, in
particular for safeguarding the authenticity of the value documents.”
Spec. ¶ 1.
Exemplary Claim
Claims 16, reproduced below, is representative of the subject matter
on Appeal (emphases added to contested prior-art limitations). Independent
claim 37 recites the dispositive limitations in commensurate form:
16. A security feature for safeguarding value
documents, comprising:
a luminescence pigment that has a host lattice doped with
a first luminophore and a second luminophore and that is
optically excitable to emit luminescence light, wherein the
luminescence pigment is configured that an excitation energy of
the first luminophore generated through optical excitation of the
luminescence pigment is transferable to the second
luminophore through an interaction between the first
luminophore and the second luminophore,
wherein the substance amount fraction of the first
luminophore in the luminescence pigment and the substance
amount fraction of the second luminophore in the luminescence

2 Our decision relies upon Appellant’s Appeal Brief (“Appeal Br.,” filed
Apr. 12, 2019); Reply Brief (“Reply Br.,” filed July 29, 2019); Examiner’s
Answer (“Ans.,” mailed May 28, 2019); Final Office Action (“Final Act.,”
mailed Aug. 30, 2018); and the original Specification (“Spec.,” filed
June 22, 2013) (claiming benefit of PCT/EP2011/006489, filed
Dec. 21, 2011).
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pigment are chosen such that the luminescence light of the
luminescence pigment has a luminescence spectrum with a first
luminescence peak emitted by the first luminophore and a
second luminescence peak emitted by the second luminophore,
wherein the share of the peak intensity of the second
luminescence peak is at least 20% and at most 80% in the sum
of the peak intensities of the first and of the second
luminescence peak,
wherein the substance amount fractions of the first and of
the second luminophores in the luminescence pigment are
further chosen such that an incomplete transfer of the excitation
energy from the first to the second luminophore is achieved,
and
wherein the substance amount fraction of the second
luminophore in the luminescence pigment lies between 50 ppm
and 2000 ppm.
REFERENCES
The prior art relied upon by the Examiner as evidence is:
Name Reference Date
Hampden-Smith et al. (Hampden-
Smith)
US 2007/0096057 A1 May 3, 2007
Blanchard et al. (“Blanchard”) US 2008/0048106 A1 Feb. 28, 2008
H. S. Kiliaan et al., “Energy Transfer in the Luminescent System
Na(Y,Gd)F4:Ce,Tb,” Journal of the Electrochemical Society Vol. 134,
no. 9 (Sept. 1987), pp. 2359–2364 (hereinafter “Kiliaan”).

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REJECTIONS
R1. Claim 40 stands rejected under 35 U.S.C. § 112(d) or pre-AIA
35 U.S.C. § 112, 4th paragraph, as being of improper dependent form for
failing to further limit the subject matter of the claim upon which it depends,
or for failing to include all the limitations of the claim upon which it
depends. Final Act. 2.
R2. Claims 16–18, 20, 22–32, 35–38, 40, and 41 stand rejected
under pre-AIA 35 U.S.C. § 103(a) as being unpatentable over the
combination of Hampden-Smith and Kiliaan. Final Act. 4.
R3. Claim 21 stands rejected under pre-AIA 35 U.S.C. § 103(a) as
being unpatentable over the combination of Hampden-Smith, Kiliaan, and
Blanchard. Final Act. 14.
ISSUES AND ANALYSIS
Based upon our review of the record, we find a preponderance of the
evidence supports particular arguments advanced by Appellant with respect
to Rejections R1–R3 of appealed claims 16–18, 20–32, 35–38, 40, and 41
for the specific reasons discussed below. We highlight and address specific
findings and arguments regarding claims 16 and 40 for emphasis as follows.
1. § 112, ¶ 4, Improper Dependent Claim Rejection R1 of Claim 40
Issue 1
Appellant argues (Appeal Br. 24–26) the Examiner’s rejection of
claim 40 under 35 U.S.C. § 112, fourth paragraph, as allegedly being of
improper dependent form, is in error. These contentions present us with the
following issue:
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Did the Examiner err in concluding that the recitation in claim 40 of
“the components of the luminescence pigment are chosen such that an
increase in the substance amount fraction of the second luminophore would
result in an increased transfer of excitation energy from the first to the
second luminophore, until the substance amount fraction is such that a
complete transfer of excitation energy from the first to the second
luminophore occurs” fails to further limit base claim 16, from which claim
40 depends?
Principles of Law
It is axiomatic that a dependent claim cannot be broader than the
claim from which it depends. See 35 U.S.C. § 112, fourth paragraph, (“[A]
claim in dependent form shall [1] contain a reference to a claim previously
set forth and then [2] specify a further limitation of the subject matter
claimed.”); see also Intamin Ltd. v. Magnetar Techs., Corp., 483 F.3d 1328,
1335 (Fed. Cir. 2007) (“An independent claim impliedly embraces more
subject matter than its narrower dependent claim.”); AK Steel Corp. v. Sollac
& Ugine, 344 F.3d 1234, 1242 (Fed. Cir. 2003) (“Under the doctrine of
claim differentiation, dependent claims are presumed to be of narrower
scope than the independent claims from which they depend.”); Pfizer, Inc. v.
Ranbaxy Labs. Ltd., 457 F.3d 1284, 1292 (Fed. Cir. 2006) (dependent claim
held invalid under 35 U.S.C. § 112, fourth paragraph, for failing to “specify
a further limitation of the subject matter” of the claim to which it referred
because it was completely outside the scope of that claim).
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Analysis
The Examiner concludes the disputed limitation of “claim 40 does not
appear to include the limitation ‘wherein the share of the peak intensity of
the second luminescence peak is at least 20% and at most 80% in the sum of
the peak intensities of the first and of the second luminescence peak’ recited
in claim 16.” Final Act. 3.
Appellant responds by arguing:
[T]he recited limitations are not incompatible, and one of
ordinary skill in the art would understand that the claim is
directed to the choice of luminescent pigment components and
not to a complete energy transfer. In particular, the components
of the luminescent pigment are chosen such that, with a
different substance amount fraction of the second luminophore
than claimed, a complete energy transfer from the first to the
second luminophore would occur, as taught in para. [0024] of
the specification.
The claim describes a relationship between the first and second
luminophore chosen for the pigment, and does not require an
increased substance amount fraction or complete transfer of
excitation energy (paras. [0023-24]). Instead it is the choice of
luminophores, or luminophore types, that is further limited by
claim 40.
Appeal Br. 25 (emphasis added).
We are persuaded by Appellant’s argument because we conclude the
limitations at issue in claim 40 do not exclude or otherwise ignore the
limitations of claim 16 that define the criteria for selection of the
luminescence pigment components in terms of their respective peak
intensities. Instead, we conclude claim 40 further limits the choice of
luminophores pigment components by defining specific pigment
characteristics, i.e., “the components of the luminescence pigment are chosen
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such that an increase in the substance amount fraction of the second
luminophore would result in an increased transfer of excitation energy from
the first to the second luminophore.”
Under the broadest reasonable interpretation in light of the
Specification, we conclude that this limitation does not require selection of
substance amount fractions of the first luminophore and second luminophore
in the luminescence pigment that would violate or otherwise negate the
requirements placed on the peak intensities of the first and second
luminescence peaks recited in claim 16. Instead, the limitations of claim 40
further define the pigment characteristics that would still have to adhere to
the limitations of claim 16.
Therefore, based upon the findings and conclusions above, on this
record, we are persuaded of error in the Examiner’s determination regarding
the disputed limitation of dependent claim 40, such that we do not sustain
the Examiner’s improper dependent claim form Rejection R1 of dependent
claim 40.
2. § 103(a) Rejection R2 of Claims 16–18, 20, 22–32, 35–38, 40, and 41
Issue 2
Appellant argues (Appeal Br. 11–20; Reply Br. 3–6) the Examiner’s
rejection of claim 16 under 35 U.S.C. § 103(a) as being obvious over the
combination of Hampden-Smith and Kiliaan is in error. These contentions
present us with the following issue:
Did the Examiner err in finding the cited prior art combination teaches
or suggests “[a] security feature for safeguarding value documents” wherein,
inter alia, “the share of the peak intensity of the second luminescence peak
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is at least 20% and at most 80% in the sum of the peak intensities of the first
and of the second luminescence peak,” and “the substance amount fraction
of the second luminophore in the luminescence pigment lies between 50
ppm and 2000 ppm,” as recited in claim 16?
Principles of Law
The test for obviousness is what the combined teachings of the prior
art would have suggested to the hypothetical person of ordinary skill in the
art. In re Keller, 642 F.2d 413, 425 (CCPA 1981).
During prosecution, claims must be given their broadest reasonable
interpretation when reading claim language in light of 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 this standard,
we interpret claim terms using “the broadest reasonable meaning of the
words in their ordinary usage as they would be understood by one of
ordinary skill in the art, taking into account whatever enlightenment by way
of definitions or otherwise that may be afforded by the written description
contained in the applicant’s specification.” In re Morris, 127 F.3d 1048,
1054 (Fed. Cir. 1997).
Analysis
In the Final Action, the Examiner finds that paragraphs 25 and 26 of
Hampden-Smith teach the limitation “wherein the share of the peak intensity
of the second luminescence peak is at least 20% and at most 80% in the sum
of the peak intensities of the first and of the second luminescence peak” in
claim 16, and further states, “it would have been obvious to one having
ordinary skill in the art at the time of the invention that the share of the peak
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intensity of the second luminescence peak of Hampden-Smith et al. is 50%
in the sum of the peak intensities of the first and of the second luminescence
peak so that both the first and of the second luminescence peak can be
observed in a desired detection scheme.” This portion of Hampden-Smith
discloses:
[0025] In a further aspect of the invention, the intensity and the
persistence of the emission can be affected by the presence of a
parasitic type of dopant atom that interacts with the electronic
excited state of the activator atom. In one aspect of the
invention, the parasitic type of dopant atoms can be the same as
the activator type of dopant atom. In another aspect of the
invention, the parasitic type of dopant atoms can be the same as
the sensitizer type of dopant atom. In yet another aspect of the
invention, the parasitic type of dopant atom can be different
than either the activator or sensitizer. In one aspect the parasitic
dopant atoms may deplete the excited state energy by an energy
transfer mechanism. In another aspect the parasitic dopant
atoms may deplete the excited state energy by an electron
transfer mechanism. The extent to which the intensity and
persistence of the emission from the activator type of dopant
atom is affected by the presence of the parasitic type of dopant
atom can be affected by the amounts and ratios of all of the
types of dopant atoms in the luminescent composition.
[0026] In a further aspect of the invention, at least one parasitic
type of dopant atom can itself emit electromagnetic radiation.
This emission may optionally be observed (used) with the
emission of the activator type of dopant atom in a detection
scheme. The parasitic dopant type may also serve to deplete the
excited state of the (emitting) activator type of dopant. This will
change the brightness and decrease the lifetime of the
luminescence.
Hampden-Smith ¶¶ 25–26.
With respect to the limitation “wherein the substance amount fraction
of the second luminophore in the luminescence pigment lies between 50
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ppm and 2000 ppm,” the Examiner relies upon Kiliaan in Figures 1 and 4
and pages 2359, 2361, and 2363 as teaching or suggesting this limitation by
finding “phosphors are well known in the art” (Final Act. 6), and “it would
have been obvious to one having ordinary skill in the art at the time of the
invention to optimize the substance amount fraction (e.g., 2000 ppm) of the
second luminophore of Hampden-Smith et al., in order to achieve a desired
detection scheme wherein a first emission from at least one parasitic type of
dopant atom can be distinctly observed (used) with the observed emission
from the activator type of dopant atom.” Final Act. 6–7.
Appellant responds by pointing out:
The required interaction and properties defining a parasitic type
of dopant atom are described in Hampden-Smith as
encompassing various embodiments and possibilities in only
broad and vague terms. Specifically, “the parasitic type of
dopant atoms can be the same as the activator type of dopant
atom . . . the same as the sensitizer type of dopant atom . . . [or]
different than either the activator or sensitizer,” while having
the effect of “[depleting] the excited state energy by an energy
transfer mechanism . . . [depleting] the excited state energy by
an electron transfer mechanism . . . [emitting] electromagnetic
radiation . . . [or] optionally [being] observed (used) with the
emission of the activator type of dopant atom in a detection
scheme. . . .”
Appeal Br. 12. “In particular, Hampden-Smith fails to provide any
information regarding an incomplete transfer of excitation energy, any
resulting spectral structure of an activator and parasitic dopant, or any
‘detection scheme.’” Appeal Br. 13.
Appellant further argues that the Examiner engaged in improper
hindsight analysis because selecting a particular parasitic dopant and
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activator dopant of specific amounts and ratios among all of the types of
dopant atoms in the luminescent composition as discussed in Hampden-
Smith would allow endless combinations (id.), and “[t]here is no evidence
presented in the rejection why a person of ordinary skill in the art would be
motivated to make the configuration of claim 16, without resort to
‘hindsight’ based on the current disclosure.” Appeal Br. 13–14 (citing
MPEP § 2142).
In the Answer, the Examiner finds that “[o]ne of ordinary skill in the
art knows that concentration is a result effective variable (MPEP § 2144.05)
for achieving a desired relative emission intensity (e.g., see Fig. 4 of Kiliaan
. . . [and] paragraph 25 of Hampden-Smith et al.).” Ans. 4.
The Examiner further finds:
The cited prior art establishes that phosphors are well known
and commercially available (e.g., see the introductory
paragraphs written in 1987 by Kiliaan et al. and the background
paragraphs 2–6 of Hampden-Smith et al.). The cited prior art
also establishes that energy transfer between an activator dopant
and a parasitic dopant is well known (e.g., see Fig. 4 of Kiliaan
et al. plotting relative emission intensities as a function of
concentration). The cited prior art further establishes that
detection schemes comprise simply using well known and
commercially available instruments[.]
Ans. 7.
Appellant takes issue with the Examiner’s additional findings and
conclusions with respect to reliance upon “concentration is a result effective
variable” as a result of the level of ordinary skill in the art as allegedly
demonstrated in Hampden-Smith, and the Examiner’s finding cited above
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that it is within the level of one of ordinary skill in the art to select a desired
relative emission intensity of 50% from Fig. 4 of Kiliaan.
Appellant responds, “the Examiner's interpretation of the level of
ordinary skill in the art is unsupported by the evidence of the references
themselves.” Reply Br. 3. Appellant further argues:
In particular, it is noted that Kiliaan’s substance
NaY0.98-xGdxCe0.01Tb0.01F4 is described as intended for use in
UV excitable lamp applications and an incomplete energy
transfer is clearly described as a serious drawback to the recited
substance (Kiliaan, p. 2364). The Examiner's proposed
interpretation of the level of ordinary skill in the art is arbitrary
and fully retrospective, as there is no reason for one of ordinary
skill in the art to use the lamp phosphor of Kiliaan for the
luminescing feature of Hampden-Smith, which is described
only generally as including activator and parasitic type dopants,
absent the benefit of the current application (Hampden-Smith,
paras. [0025-26]).
Similarly, the Examiner’s reliance on a “desired detection
scheme” of Hampden-Smith disregards that there is no teaching
in Hampden-Smith of particular emission peaks or spectral
structure of any kind, particularly of a parasitic dopant. As
referenced in the Examiner's Answer at p. 6, Hampden-Smith
recognizes that “luminescent compositions can be tailored to
have a wide variety of absorption frequencies, emission
frequencies, emission intensities . . .” and “the extent to which
the intensity and persistence of the emission from the activator
type of dopant atom is affected by the presence of the parasitic
type of dopant atom can be affected by the amounts and ratios
of all the types of dopant atoms in the luminescent
composition.” (Hampden-Smith, paras. [0007] and [0025])
There is no teaching or consideration of any kind given in
Hampden-Smith to relative emission of a first and second
luminophore, or of any effect of concentration on an emission
of a parasitic dopant, nor is there any consideration given at
all to relative intensities of distinct peaks.
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Reply Br. 3–4 (emphasis added).
In In re Antonie, 559 F.2d 618 (CCPA 1977), the CCPA held that a
particular parameter must first be recognized as a result-effective variable,
i.e., a variable which achieves a recognized result, before the determination
of the optimum or workable ranges of said variable might be characterized
as routine experimentation, because “obvious to try” is not a valid rationale
for an obviousness finding. However, in KSR International Co. v. Teleflex
Inc., 550 U.S. 398 (2007), the Supreme Court held that “obvious to try” was
a valid rationale for an obviousness finding, for example, when there is a
“design need” or “market demand” and there are only a “finite number” of
solutions. KSR, 550 U.S. at 421.
However, we are persuaded by Appellant’s argument because, in this
case, the selections of dopant concentrations and relative emission intensities
are not finite, but instead present an essentially infinite range of possibilities,
none of which, on this record, are taught or even suggested by the cited prior
art. Moreover, we disagree with the Examiner because the Examiner has not
established on this record, aside from an unsupported statement (Ans. 4),
that “concentration is a result effective variable,” or that it is within the level
of one of ordinary skill in the art to select a desired relative emission
intensity in the manner contemplated by claim 16.3

3 Because we agree with at least one of the dispositive arguments advanced
by Appellant, we need not reach the merits of Appellant’s other arguments.
See Beloit Corp. v. Valmet Oy, 742 F.2d 1421, 1423 (Fed. Cir. 1984)
(finding an administrative agency is at liberty to reach a decision based on “a
single dispositive issue”).
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Based upon the findings above, on this record, we are persuaded of
error in the Examiner’s reliance on the cited prior art combination to teach or
suggest the disputed limitations of claim 16, such that we find error in the
Examiner’s resulting legal conclusion of obviousness. Therefore, we do not
sustain the Examiner’s obviousness rejection of independent claim 16, and
independent claim 37, which recites the dispositive limitations in
commensurate form. For the same reasons, we do not sustain the rejection
of dependent claims 17, 18, 20–32, 35, 36, 38, 40, and 41 that variously
depend from independent claims 16 and 37.
3. § 103(a) Rejection R3 of Claim 21
In light of our reversal of the rejections of independent claim 16,
supra, we also reverse obviousness Rejection R3 under § 103 of claim 21,
which depends from claim 16. On this record, the Examiner has not shown
how the additionally cited Blanchard reference overcome the
aforementioned deficiencies with Hampden-Smith and Kiliaan, as discussed
above regarding claim 16.
CONCLUSIONS
(1) Appellant has persuasively argued that the Examiner erred with
respect to improper dependent claim Rejection R1 of claim 40 under 35
U.S.C. § 112, fourth paragraph, and we do not sustain the rejection.
(2) Appellant has persuasively argued that the Examiner erred with
respect to obviousness Rejections R2 and R3 of claims 16–18, 20–32, 35–
38, 40, and 41 under 35 U.S.C. § 103(a) over the cited prior art combinations
of record, and we do not sustain the rejections.
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DECISION SUMMARY
Claims
Rejected
35 U.S.C.
§
Basis /
References Affirmed Reversed
40 112, ¶ 4
Improper
Dependent Claim 40
16–18, 20,
22–32, 35–
38, 40, 41
103(a)
Hampden-Smith,
Kiliaan
16–18, 20,
22–32, 35–
38, 40, 41
21 103(a)
Hampden-Smith,
Kiliaan, Blanchard 21
Overall
Outcome
16–18, 20–
32, 35–38,
40, 41
REVERSED