SICPA HOLDING SA

Patent Trials and Appeals Board

Jul 27, 2020

15103565 - (D) (P.T.A.B. Jul. 27, 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.
15/103,565 06/10/2016 Mathieu SCHMID 4303/0140PUS1 5248
60601 7590 07/27/2020
Muncy, Geissler, Olds & Lowe, P.C.
4000 Legato Road
Suite 310
Fairfax, VA 22033
EXAMINER
TADAYYON ESLAMI, TABASSOM
ART UNIT PAPER NUMBER
1712
NOTIFICATION DATE DELIVERY MODE
07/27/2020 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):
MAILROOM@MG-IP.COM
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte MATHIEU SCHMID, CLAUDE-ALAIN DESPLAND,
EVGENY LOGINOV, CEDRIC AMERASINGHE, and PIERRE DEGOTT
Appeal 2019-005158
Application 15/103,565
Technology Center 1700
Before JAMES C. HOUSEL, BRIAN D. RANGE, and
MERRELL C. CASHION, JR., Administrative Patent Judges.
HOUSEL, 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 1–13 and 16–18 under 35 U.S.C. § 103
over Raksha (US 2006/0081151 A1, pub. Apr. 20, 2006) in view of Phillips
(US 2002/0182383 A1, pub. Dec. 5, 2002). We have jurisdiction under
35 U.S.C. § 6(b).

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 SICPA HOLDING
SA. Appeal Brief (“Appeal Br.”) filed January 18, 2019, 2.
Appeal 2019-005158
Application 15/103,565

2
We REVERSE.2
CLAIMED SUBJECT MATTER
The invention relates to processes for producing optical effect layers
(“OELs”) from a coating composition comprising magnetically oriented
platelet-shaped magnetic or magnetisable pigment particles in a binder
material. Spec. ¶ 1. Such OELs may serve as anti-counterfeit measures on
security documents or security articles or for decorative purposes. Id.
Appellant discloses that platelet-shaped pigment particles (or oblate particles
or flakes) are two-dimensional particles due to the large aspect ratio of their
dimensions, wherein two dimensions of each particle are substantially larger
than a third dimension and a main axis corresponds to its longest dimension
and a second axis perpendicular to the main axis corresponds to the second
of the two larger dimensions. Id. ¶ 30.
Appellant discloses that the processes comprise two magnetic
orienting steps, a first bi-axial orientation step in which the platelet-shaped
particles in the coating composition are exposed to a dynamic magnetic
field, and a second mono-axial orientation step in which the bi-axially
oriented particles are exposed to a static magnetic field. Spec. ¶ 11.
Appellant discloses that bi-axial orientation aligns the planes of the platelet-
shaped particles essentially parallel to each other in all directions, whereas
mono-axial orientation aligns only the particles’ main axes parallel to each
other. Id. ¶¶ 37, 38. Thereafter, the coating composition is hardening to fix
the particles in this orientation. Id.

2 This Decision also cites to the Specification (“Spec.”) filed June 10, 2016,
the Examiner’s Answer (“Ans.”) dated April 26, 2019, and the Reply Brief
(“Reply Br.”) filed June 21, 2019.
Appeal 2019-005158
Application 15/103,565

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Claim 1, reproduced below from the Claims Appendix to the Appeal
Brief, is illustrative of the claimed subject matter:
1. A process for producing an optical effect layer (OEL) on
a substrate, said process comprising:
a) applying on a substrate surface a coating composition
comprising: i) platelet-shaped magnetic or magnetisable
pigment particles; and ii) a binder material, said coating
composition being in a first state,
b) exposing the coating composition to a dynamic
magnetic field of a first magnetic-field generating device so as
to bi-axially orient at least a part of the platelet-shaped
magnetic or magnetisable pigment particles,
c) exposing the coating composition exposed to the
dynamic magnetic field to a static magnetic field of a second
magnetic-field-generating device, thereby mono-axially re-
orienting at least a part of the platelet-shaped magnetic or
magnetisable pigment particles, and
d) hardening the coating composition exposed to the
static magnetic field to a second state so as to fix the platelet-
shaped magnetic or magnetisable pigment particles in their
adopted positions and orientations.
OPINION
After review of the Examiner’s and Appellant’s opposing positions,
the applied prior art, and Appellant’s claims and Specification disclosures,
we determine that the Appellant’s arguments are sufficient to identify
reversible error in the Examiner’s stated obviousness rejection. In re Jung,
637 F.3d 1356, 1365 (Fed. Cir. 2011). Accordingly, we reverse the
obviousness rejection for the reasons set forth in the Appeal and Reply
Briefs. We offer the following for emphasis.
Appeal 2019-005158
Application 15/103,565

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The Examiner finds that Raksha teaches alternative embodiments for
magnetically orienting platelet-shaped magnetic pigment particles, the first
embodiment (Fig. 5) applying a static magnetic field to mono-axially orient
the particles and the second embodiment (Fig. 2) applying a dynamic
magnetic field to bi-axially orient the particles. Ans. 3–4. The Examiner
states that the rejection is based on a combination of these two embodiments
because Raksha teaches that these embodiments may be combined. Id. at 4.
Appellant argues, inter alia, that the Raksha fails to disclose
combining these two embodiments, nor providing two sequential magnetic
orientation steps.3 Appeal Br. 8–10. We agree.
The Examiner has the initial duty of supplying the requisite factual
basis and may not, because of doubts that the invention is patentable, resort
to speculation, unfounded assumptions, or hindsight reconstruction to supply
deficiencies in the factual basis. See KSR Int’l Co. v. Teleflex Inc., 550 U.S.
398, 418 (2007) (“To facilitate review, [the obviousness] analysis should be
made explicit.”); see also, In re Kahn, 441 F.3d 977, 988 (Fed. Cir. 2006)
(“[R]ejections on obviousness grounds cannot be sustained by mere
conclusory statements; instead, there must be some articulated reasoning
with some rational underpinning to support the legal conclusion of
obviousness.”), quoted with approval in KSR, 550 U.S. at 418.
Although the Examiner finds that Raksha teaches that the two
embodiments may be combined, the Examiner fails to direct our attention to

3 Appellant also argues that Raksha fails to teach bi-axially aligning the
particles via a dynamic magnetic field. Appeal Br. 5–7. Because we are
persuaded of reversible error in the rejection for other reasons, we need not
address this argument in our Decision.
Appeal 2019-005158
Application 15/103,565

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any support in Raksha for this finding, nor do we find any. Moreover, the
Examiner fails to articulate any rationale why one skilled in the art would
have combined these two embodiments together absent Appellant’s
disclosure. The Examiner does not rely on Phillips to remedy these
deficiencies in the rejection. Accordingly, we cannot sustain the Examiner’s
obviousness rejection of claims 1–13 and 16–18 over Raksha and Phillips.
CONCLUSION
Upon consideration of the record and for the reasons set forth above
and in the Appeal and Reply Briefs, the Examiner’s decision to reject claims
1–13 and 16–18 under 35 U.S.C. § 103 as unpatentable over Raksha in view
of Phillips is reversed.
DECISION SUMMARY
In summary:
Claims
Rejected
35 U.S.C.
§
Reference(s)/Basis Affirmed Reversed
1–13, 16–18 103 Raksha, Phillips 1–13, 16–18

REVERSED