Ex Parte Rosset

Patent Trial and Appeal Board

Dec 31, 2015

10575367 (P.T.A.B. Dec. 31, 2015)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE FIRST NAMED INVENTOR
10/575,367 11/22/2011 Henri Rasset
38834 7590 01/05/2016
WESTERMAN, HATTORI, DANIELS & ADRIAN, LLP
1250 CONNECTICUT A VENUE, NW
SUITE 700
WASHINGTON, DC 20036
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
ATTORNEY DOCKET NO. CONFIRMATION NO.
062402 3944
EXAMINER
GRABOWSKI, KYLE ROBERT
ART UNIT PAPER NUMBER
3725
NOTIFICATION DATE DELIVERY MODE
01/05/2016 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):
patentmail@whda.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte HENRI ROSSET
Appeal2013-008482
Application 10/575,367
Technology Center 3700
Before EDWARD A. BROWN, CHARLES N. GREENHUT, and
LYNNE H. BROWNE, Administrative Patent Judges.
BROWN, Administrative Patent Judge.
DECISION ON APPEAL
STATEivIENT OF THE CASE
Henri Rosset (Appellant) 1 appeals under 35 U.S.C. § 134 from the
Examiner's decision rejecting claims 42-69. Appeal Br. 4. 2 An oral hearing
was held on December 17, 2015. We have jurisdiction under 35 U.S.C.
§ 6(b ).
We AFFIRM-IN-PART and enter NEW GROUNDS OF
REJECTION.
1 The Appeal Brief identifies Arjowiggins Security as the real party in
interest. Appeal Br. 2.
2 Claims 1--41 are cancelled.
Appeal2013-008482
Application 10/575,367
CLAIMED SUBJECT MATTER
Claims 42 and 53 are independent. Claim 42 is illustrative of the
claimed subject matter, and recites:
42. A security paper comprising at least two fibrous paper
plies, wherein each of said plies is a material layer having a
fibrous structure comprising fibers,
the first ply being an external ply that includes a first
authentication element provided within a region of non-zero
thickness of the first ply, said first authentication element
comprising at least one of (i) authentication particles, and (ii)
authentication fibers different from the fibers of the fibrous
structure of the first ply, and
the other ply, the second ply, comprising a second
authentication element provided within an area of non-zero
thickness of the second ply, said second authentication element
comprising at least one of (i) authentication particles, and (ii)
authentication fibers different from the fibers of the fibrous
structure of the second ply,
wherein each of said first and second authentication
elements is selected from the group consisting of iridescent
particles, luminescent fibers, luminescent particles, fluorescent
fibers, fluorescent particles, phosphorescent fibers,
phosphorescent particles, colored fibers, colored planchettes,
thermochromic fibers, thermochromic particles, fibers that react
to electromagnetic fields, particles that react to electromagnetic
fields, and mixtures thereof,
wherein the first authentication element is of a first type
and the second authentication element is of a second type
different from the first type,
and wherein (1) the first ply does not include any
authentication element of the second type, and (2) the second
ply does not include any authentication element of the first
type.
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Application 10/575,367
EVIDENCE
The Examiner relies upon the following evidence:
Williams US 3,880,706 Apr. 29, 1975
Jalon US 4,921,280 May 1, 1990
Detrick US 5,161,829 Nov. 10, 1992
Murakami US 5,565,276 Oct. 15, 1996
Doublet US 6,402,888 B 1 June 11, 2002
Schmitz US 6,491,324 Bl Dec. 10, 2002
John H. Klugness et al., lightweight, high-opacity paper by fiber
loading: filler comparison, NORD IC PULP AND p APER RESEARCH JOURNAL,
vol. 15, no. 5/2000, pp. 345-350 (hereinafter, "Nordic Pulp and Paper").
REJECTIONS
1. Claims 42--46, 48-50, 52, 68, and 69 are rejected under 35
U.S.C. § 103(a) as unpatentable over Murakami, Jalon, and Detrick. 3
2. Claim 47 is rejected under 35 U.S.C. § 103(a) as unpatentable
over Murakami, Jalon, Detrick, and Williams.
3. Claim 51 is rejected under 35 U.S.C. § 103(a) as unpatentable
over Murakami, Jalon, Detrick, and Schmitz.
4. Claims 53-58, 61, and 63----67 are rejected under 35 U.S.C.
§ 103(a) as unpatentable over Doublet, Jalon, and Detrick.
5. Claims 59 and 62 are rejected under 35 U.S.C. § 103(a) as
unpatentable over Doublet, Jalon, Detrick, and Williams.
6. Claim 60 is rejected under 35 U.S.C. § 103(a) as unpatentable
over Doublet, Jalon, Detrick, and Nordic Pulp and Paper.
3 The heading of this rejection also lists claims 40 and 41. Non-Final Act. 3.
Claims 40 and 41 have been cancelled and replaced by claims 68 and 69,
respectively. Accordingly, we treat this rejection as including claims 68 and
69.
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ANALYSIS
Rejection 1
Appellant indicates claim 42 and the claims depending directly or
indirectly therefrom are argued together. Appeal Br. 9. Accordingly, we
select claim 42 to decide the appeal with respect to the group as to the
ground of rejection. See 37 C.F.R. § 41.37(c)(l)(iv). Dependent claims 43-
46, 48-50, 52, 68, and 69 will stand or fall with claim 42.
For claim 42, the Examiner finds Murakami discloses a security paper
comprising a first ply 10 and a second ply 20, where first ply 10 may contain
a first authentication element, such as nacreous pigments, solely in the first
ply. Non-Final Act. 3 (citing col. 6, 11. 60-65; col. 11, 11. 17-19; Fig. 5).
The Examiner also finds Murakami discloses dyed fibers may be used. Id. at
4 (citing col. 7, 11. 10-14 ). The Examiner determines Murakami does not
disclose fluorescent fibers (second authentication element). Id.
The Examiner finds Jalon discloses a security document including
fluorescent polyester fibers, and concludes it would have been obvious to
provide these fibers in Murakami's security paper for authentication and
protection against forgery. Id. (citing col. 1, 11. 17-23; claim 1). The
Examiner determines Murakami and Jalon do not disclose providing the
"first authentication element" (fluorescent polyester fibers) solely in the
"first ply." Id. 4
The Examiner further finds Detrick teaches a two-ply assembly in
which both sheets may comprise cotton fibers and/or synthetic fibers
(including polyester) (id. (citing col. 3, 11. 54--56)), and the individual
4 It appears the "first authentication element" should be the "second
authentication element" and the "first ply" should be the "second ply."
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Application 10/575,367
characteristics of each layer may be different to achieve desired or necessary
effects in the resulting lamination (id. (citing col. 3, 11. 34--40)). The
Examiner concludes it would have been obvious to provide the
authentication feature taught by Jalon solely in one layer in view of Detrick
to provide a desired individual characteristic to that layer. Id.
Based on these findings, we understand the Examiner's rejection
relies on Detrick to show Jalon's fibers can be incorporated into layer 20 of
Murakami to provide desirable properties to that layer.
Appellant contends the Examiner provides no reason to add Jalon's
reinforcing element in Murakami's thick layer 20 instead of thin layer 10, or
to both layers 10 and 20. Appeal Br. 13. According to Appellant,
Murakami teaches the authentication elements should be in only a single
layer. Id. Appellant acknowledges Murakami discloses:
Anti-falsification paper according to the present
invention can be used in combination with other anti-
falsification means, such as \~1atermarking, mixing \~1ith d}'ed
fibers, inclusive of security threads, and so forth. The anti-
falsification effect can be further improved by so doing.
Murakami, col. 7, 11. 10-14 (emphasis added); see Appeal Br. 12-13.
Appellant contends all authentication elements added to Murakami' s paper
would be provided in thin ply 10 to keep the "printing side" of thick ply 20
undisturbed. Id. at 13. Appellant asserts, "Murakami is not concerned about
interferences between various authentication elements." Id. In support,
Appellant cites to the Declaration Under 3 7 C.F .R. § 1.13 2 of Dr. Philippe
Dietemann (hereinafter, "Declaration"). Id. at 16 (citing Deel. para. 4). We
have reviewed all statements in the Declaration. The Declaration indicates
one skilled in the art would include such "anti-falsification means" in the
same layer as the nacreous fragments in Murakami. Deel. para. 5.
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Murakami indicates "other anti-falsification means" can be used in
"combination with" the anti-falsification paper. Murakami, col. 7, 11. 10-14.
As such, Murakami discloses that the anti-falsification paper, which includes
anti-falsification means, can be used in combination with additional, other
anti-falsification means. Murakami does not limit the possible other anti-
falsification means to the examples listed. Rather, Murakami is clear the
anti-falsification means listed are only exemplary and not exhaustive.
Murakami further teaches the "other anti-falsification means" further
improve the anti-falsification effect-that is, the anti-falsification effect
already provided by the anti-falsification paper. Id.
Murakami discloses the first layer 10 of the anti-falsification paper
may contain nacreous pigment coated fragments. The Examiner notes
Murakami discloses "dyed fibers" (i.e., "other anti-falsification means") can
also be included in the anti-falsification paper. See Murakami, col. 7, 11. 10-
14. We note claim 42 indicates the second authentication element may be
"colored fibers." We understand that Murakami's dyed fibers can be
considered to be colored fibers, as claimed. Accordingly, incorporating
Murakami's dyed fibers in layer 20 of the anti-falsification paper would
result in the paper comprising a first authentication element in layer 10 and a
second authentication element in layer 20, as required by claim 42.
Alternatively, we agree with the Examiner that it would have been
obvious to use Jalon's fluorescent fibers as the second authentication
element in Murakami.
The Examiner states, "[i]n any given two-layer security paper, these
are the only two possibilities for incorporation of elements to the paper (i.e.
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either they are provided in both layers, or only one layer)." Ans. 11. As
stated inKSRint'l. Co. v. Teleflex Inc., 550 U.S. 398, 416 (2007):
When there is a design need or market pressure to solve a
problem and there are a finite number of identified, predictable
solutions, a person of ordinary skill has good reason to pursue
the known options within his or her technical grasp. If this
leads to the anticipated success, it is likely the product not of
innovation but of ordinary skill and common sense. In that
instance the fact that a combination was obvious to try might
show that it was obvious under § 103.
In Murakami, the other anti-falsification means could be added to
layer 10, layer 20, or layer 10 and layer 20. As such, there are a finite
number of ways the other anti-falsification means could be added to the anti-
falsification paper. Murakami does not explicitly limit where the other anti-
falsification means can be located in the anti-falsification paper. Murakami
discloses the fragments of nacreous pigments are added in layer 10 where
they are sufficiently bright. Murakami, col. 6, 1. 48---col. 7, 1. 9. Murakami
does not indicate that the other anti-falsification means must be combined in
the same layer with anti-falsification means in the anti-falsification paper.
In other words, Murakami does not indicate the other anti-falsification
means could not be used in layer 20.
Detrick discloses that the authentication indicia is selected to be
chemically and mechanically compatible with the paper, and the color, color
intensity, and optical density of the ink or other media are selected to
provide the desired characteristics in the security paper. Detrick, col. 5, 11.
47-53. This teaching would have suggested to one of ordinary skill in the
art to select other anti-falsification means added to layer 20 in Murakami
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that provide the desired characteristics to the anti-falsification paper - that
is, further improve the anti-falsification effect.
Appellant's contention that Murakami is not concerned with different
authentication elements interfering with each other is not persuasive. The
Declaration states,
I note in particular that Murakami explains that the different
authentication elements are "recognized independently" (cf. col.
4, line 4). This comment by Murakami indicates to the person·
of the art that combining authentication elements of different
types in a same layer is not expected to pose any problem in
terms of their respective recognition (authentication)
procedures.
Deel. para. 4. We note Murakami discloses that for fragments made from
nacreous pigments of different colors, "the rainbow colors can be recognized
independently for each of these three colors." Murakami, col. 3, 1. 67---col. 4,
1. 4. Murakami does not indicate that such independent recognition would
also occur when fragments made from nacreous pigments were combined
with the other anti-falsification means in the same layer.
As Murakami teaches that other anti-falsification means that further
improve the anti-falsification effect can be used in the anti-falsification
paper, persons of ordinary skill in the art would have added other anti-
falsification means that achieve this result, not those that do not. Assuming
the other anti-falsification means would not interfere with recognition of
fragments made from nacreous pigments, one skilled in the art would have
known that locating the other anti-falsification means in layer 20 would have
presented one predictable solution to the problem of further improving the
anti-falsification effect in the anti-falsification paper.
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For the foregoing reasons, we sustain the rejection of claim 42, and
claims 43--46, 48-50, 52, 68, and 69 falling with claim 42, as unpatentable
over Murakami, Jalon, and Detrick. However, because our findings and
reasoning differ from the Examiner's, we designate our affirmance as a new
ground of rejection under 37 C.F.R. § 41.50(b) to provide Appellant with a
full opportunity to respond thereto.
Rejections 2 and 3
As Appellant argues dependent claim 47 (Rejection 2) and claim 51
(Rejection 3) together with claim 42, and does not provide any separate
argument for patentability of claim 4 7 or 51, we sustain the rejection of
claim 47 over Murakami, Jalon, Detrick, and Williams, and the rejection of
claim 51 as unpatentable over Murakami, Jalon, Detrick, and Schmitz, for
the same reasons as those discussed for claim 42. We designate our
affirmance of each of these rejections as a new ground of rejection.
Rejection 4
For claim 53, the Examiner finds Doublet discloses a security paper
comprising a first ply 5 having a first authentication element (watermark)
and a second ply 3. Non-Final Act. 6. The Examiner finds Doublet does not
disclose second ply 3 comprises a reinforcing element. Id.
The Examiner determines it would have been obvious to provide
Jalon's fluorescent polyester fibers in Doublet's security paper for
authentication and protection against forgery. Id. (citing claim 1; col. 1, 11.
17-23).
The Examiner also determines Doublet and Jalon do not disclose
providing the first authentication element (fluorescent polyester fibers)
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Application 10/575,367
- - - - - - - - - i:;;: -- - - - -- - - - - - - -
solely in the first ply. id. at 7:' The Examiner's findings relating to Detrick
are the same as those discussed above for claim 42. Id. The Examiner
concludes it would have been obvious to provide the reinforcing
authentication feature taught by Jalon solely in one layer in view of Detrick
to provide a desired individual characteristic to that layer (i.e., increased tear
strength). Id.
We agree with Appellant's contention that the Examiner fails to
provide a reason to add a reinforcing element only in the layer in Doublet in
which there is no watermark. Appeal Br. 22. The Examiner finds Jalon
discloses security fibers (fluorescent polyester fibers) incorporated in a
security document. The Examiner does not identify any disclosure in Jal on
that the polyester fibers function as a reinforcing element in the security
paper. Even assuming adding Jalon's fluorescent polyester fibers in second
ply 3 of Doublet's security paper would provide "authentication and
protection against forgery," the Examiner has not established that Jalon's
fluorescent fibers would necessarily function as a reinforcing element in
Doublet's security paper. Consequently, the Examiner has not articulated an
adequate reason with a rational underpinning to incorporate Jalon's polyester
fibers in Doublet's second ply 3.
Thus, we do not sustain the rejection of claim 53, and claims 54--58,
61, and 63----67 depending therefrom, as unpatentable over Doublet, Jalon,
and Detrick.
5 It appears the "first authentication element" should be the "second
authentication element" and the "first ply" should be the "second ply."
Appellant indicates the same understanding. Appeal Br. 21.
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Rejections 5 and 6
The Examiner's application of Williams to the rejection of claims 59
and 62 (Rejection 5) (Non-Final Act. 8-9), and Nordic Pulp and Paper to the
rejection of claim 60 (Rejection 6) (Non-Final Act. 9), does not cure the
deficiencies of the rejection of claim 53. Accordingly, we do not sustain the
rejection of claims 59 and 62 as unpatentable over Doublet, Jalon, Detrick,
and Williams, and the rejection of claim 60 as unpatentable over Doublet,
Jalon, Detrick, and Nordic Pulp and Paper, for the same reasons as those
discussed for claim 5 3.
New Grounds of Rejection
Claim 42 recites, inter alia, "wherein the first authentication element
is of a first type and the second authentication element is of a second type
different from the first type." (Emphasis added.) The meaning of "type" is
unclear. The meaning of "different" is also unclear. What distinguishes a
"first type" from a "second type," and how are these types "different from"
each other? It is unclear, for example, whether each of the individual
members of the Markush group recited in claim 42 is a "different" "type" of
authentication element. Can the individual members of the Markush group
(e.g., iridescent particles) be both a first authentication element and a second
authentication element (i.e., both a "first type" and a "second type") in the
same security paper? The Markush group members are particles and fibers,
but it is unclear whether "color planchettes" are particles and/or fibers. We
further note that, based on the recitation of "mixtures thereof," either or both
of the first authentication element and the second authentication element can
comprise a combination of authentication particles, a combination of
authentication fibers, or a combination of both authentication particles and
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Application 10/575,367
authentication fibers. It is unclear what "type" means in relation to such
combinations of authentication particles and/or authentication fibers. For
example, the Markush group of first and second authentication elements in
claim 42 recites, in regard to particles, iridescent particles, luminescent
particles, fluorescent particles, phosphorescent particles, thermochromic
particles, and particles that react to electromagnetic fields. Claim 42 does
not limit how many of these different particles the first authentication
element or the second authentication element can comprise. In the case
where the first authentication element or the second authentication element
comprises multiple different particles of the Markush group, with our
without one or more of the recited fibers, what does the "first type" or
"second type" mean?
The Patent and Trademark Office "determines the scope of claims in
patent applications not solely on the basis of the claim language, but upon
giving claims their broadest reasonable construction 'in light of the
specification as it would be interpreted by one of ordinary skill in the art."'
Phillips v. AWHCorp., 415 F.3d 1303, 1316 (Fed. Cir. 2005) (en bane)
(citing In re Am. Acad. of Sci. Tech. Ctr., 367 F.3d 1359, 1364 (Fed. Cir.
2004)). We note the term "type" is not found in Appellant's original
disclosure. In addition, Appellant does not identify any disclosure that
reveals a particular meaning of this term. Accordingly, the Specification
does not provide any guidance as to the meaning of "type," as recited in
claim 42. Thus, the meaning of "type" is unclear for this additional reason.
We also note claim 42 recites colored planchettes as a member of the
Markush group of first and second authentication elements. Claim 68
depends from claim 42 and recites colored planchettes, but also luminescent
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planchettes, fluorescent planchettes, phosphorescent planchettes, and
planchettes that react to electromagnetic fields. As the Markush group in
claim 42 is closed (i.e., "group consisting of'), the recitation of these
additional planchettes in claim 68 makes claim 42 inconsistent with claim
68.
Also, claim 53 recites, inter alia, "the other ply, the second ply,
comprising a reinforcing element, said reinforcing element being fibers
different from the fibers of the fibrous structure of the second ply."
(Emphasis added.) The meaning of "different" is unclear in claim 5 3 as
well. Consequently, it is unclear how the reinforcing fibers are "different
from" the fibers of the fibrous structure of the second ply.
Thus, we determine that claims 42-69 fail to comply with the
requirements of 35 U.S.C. § 112, second paragraph. We designate our
rejection of these claims as a new ground of rejection under 37 C.F.R.
§ 41. 50(b ). We also determine that claim 68 also fails to comply with the
requirements of 35 U.S.C. § 112, fourth paragraph. We designate our
rejection of claim 68 as a new ground of rejection under 37 C.F.R.
§ 41.50(b).
DECISION
We AFFIRM the rejection of claims 42--46, 48-50, 52, 68, and 69
under 35 U.S.C. § 103(a) as unpatentable over Murakami, Jalon, and
Detrick, and designate our affirmance as a NEW GROUND OF
REJECTION pursuant to 37 C.F.R. § 41.50(b).
We AFFIRM the rejection of claim 47 under 35 U.S.C. § 103(a) as
unpatentable over Murakami, Jalon, Detrick, and Williams, and designate
our affirmance as a NEW GROUND OF REJECTION.
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We AFFIRM the rejection of claim 51under35 U.S.C. § 103(a) as
unpatentable over Murakami, Jalon, Detrick, and Schmitz, and designate our
affirmance as a NEW GROUND OF REJECTION.
We REVERSE the decision of the Examiner to reject claims 53----67.
We enter a NEW GROUND OF REJECTION of claims 42----69 under
35 U.S.C. § 112, second paragraph.
We enter a NEW GROUND OF REJECTION of claim 68 under 35
U.S.C. § 112, fourth paragraph.
37 C.F.R. § 41.50(b) provides that "[a] new ground of rejection
pursuant to this paragraph shall not be considered final for judicial review."
37 C.F.R. § 41.50(b) also provides that Appellant:
WITHIN TWO MONTHS FROM THE DATE OF THE
DECISION, must exercise one of the following two options
with respect to the new ground of rejection to avoid termination
of the appeal as to the rejected claims:
(1) Reopen prosecution. Submit an appropriate
amendment of the claims so rejected or new [ e ]vidence relating
to the claims so rejected, or both, and have the matter
reconsidered by the [E]xaminer, in which event the proceeding
will be remanded to the [E]xaminer ....
(2) Request rehearing. Request that the proceeding be
reheard under § 41.52 by the Board upon the same record ....
(emphasis added).
No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. § 1.136(a). See 37 C.F.R.
§ 1.136(a)(l )(iv).
AFFIRMED-IN-PART; 37 C.F.R. § 41.50(b)
msc
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