Nakagawa Sangyo Co., Ltd.

Patent Trials and Appeals Board

Mar 23, 2022

2021001382 (P.T.A.B. Mar. 23, 2022)

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. 14/927,139 10/29/2015 Yoshikatsu NAKAGAWA 917-106 8781 35161 7590 03/23/2022 DICKINSON WRIGHT PLLC - WASHINGTON, DC 1825 EYE ST., NW SUITE 900 WASHINGTON, DC 20006 EXAMINER CHAU, LINDA N ART UNIT PAPER NUMBER 1785 NOTIFICATION DATE DELIVERY MODE 03/23/2022 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): dwpatents@dickinsonwright.com PTOL-90A (Rev. 04/07) UNITED STATES PATENT AND TRADEMARK OFFICE ____________ BEFORE THE PATENT TRIAL AND APPEAL BOARD ____________ Ex parte YOSHIKATSU NAKAGAWA and NAOKI IKEGAMI __________ Appeal 2021-001382 Application 14/927,139 Technology Center 1700 ____________ Before MICHAEL P. COLAIANNI, DEBRA L. DENNETT, and JEFFREY R. SNAY, Administrative Patent Judges. COLAIANNI, Administrative Patent Judge. DECISION ON APPEAL STATEMENT OF THE CASE Appellant1 appeals under 35 U.S.C. § 134(a) the Examiner’s Non- Final Rejection of claims 1, 3, 9, 15, 17, 19, 20, 22-24, 28, and 30-32. Claims 2, 4-8, 10-14, 16, 18, 21, 25-27, and 29 have been cancelled. We have jurisdiction over the appeal pursuant to 35 U.S.C. § 6(b). We REVERSE. 1 We use the word “Appellant” to refer to “applicant” as defined in 37 C.F.R. § 1.42. Appellant identifies the real party in interest as Nakagawa Sangyo Co., Ltd. (Appeal Br. 2). Appeal 2021-001382 Application 14/927,139 2 Appellant’s invention is directed to a thread/yarn for determining whether or not a product is genuine. (Spec. 1:4-6). Claim 1 is illustrative: 1. forgery-preventing yarn comprising a flat forgery-preventing thread formed of a film comprising a base sheet and letters or images printed on the base sheet, the film being slit to have a width of 0.15mm to 0.75mm, wherein the flat forgery-preventing thread is twisted to a core thread/yam, and wherein the letters or images are exposed upon twisting of the flat forgery-preventing thread to the core thread/yarn; wherein all of the letters or images printed on the base sheet are depicted only by a straight line/straight lines which is/are parallel with, perpendicular to, inclined by 45 degrees to the feeding direction of the base sheet on an occasion of printing the letters or images, or by a combination of these lines. Appellant appeals the following rejections: 1. Claims 1, 3, 9, 15, and 17 are rejected under 35 U.S.C. § 103 as unpatentable over Ottway (GB 1095286, Dec. 13, 1967) in view of Teodoro Vidal (US 5,314,739, May 24, 1994). 2. Claims 1, 3, 9, 15, 17, 19, 20, and 22-24 are rejected under 35 U.S.C. § 103 as unpatentable over Ottway in view of Teodoro Vidal, and Seki et al. (US 2008/0129036 A1, June 5, 2008) (“Seki”). 3. Claims 28 and 30-32 are rejected under 35 U.S.C. § 103 as unpatentable over Ottway in view of Teodoro Vidal and Kim (US 6,592,716 B1, July 15, 2003). 4. Claims 1, 3, 9, 15, and 17 are rejected under 35 U.S.C. § 103 as unpatentable over Seki in view of Teodoro Vidal. 5. Claims 19, 20, and 22-24 are rejected under 35 U.S.C. § 103 as unpatentable over Seki. Appeal 2021-001382 Application 14/927,139 3 6. Claims 28 and 30-32 are rejected under 35 U.S.C. § 103 as unpatentable over Seki in view of Kim. FINDINGS OF FACT & ANALYSIS We review the appealed rejection for reversible error based on the arguments and evidence presented by Appellant. 37 C.F.R. § 41.37(c)(1)(iv); Ex parte Frye, 94 USPQ2d 1072, 1075 (BPAI 2010) (precedential) cited with approval in In re Jung, 637 F.3d 1356, 1365 (Fed. Cir. 2011) (explaining that even if the Examiner had failed to make a prima facie case, “it has long been the Board’s practice to require an applicant to identify the alleged error in the examiner’s rejections”). Rejections (1) to (3) The Examiner’s findings and conclusions regarding Ottway and Teodoro Vidal2 are located on pages 3 to 4 of the Non-Final Office Action. The Examiner finds, in relevant part, that Ottway teaches a flat forgery- preventing thread having letter or images printed on a base sheet, but does not describe the characteristics of the letters or images (Non-Final Act. 3). The Examiner finds that Ottway does not impose any generalized limit on the characteristics of the letters or images and does not teach away from using straight lines to depict the letters or images or a digital font (Non-Final 2 The Examiner relies on Teodoro Vidal to teach twisting the flat thread to a core yarn where the image on the thread is exposed upon twisting (Non- Final Act. 3). The Examiner concludes and Appellant does not dispute that it would have been obvious to combine Teodoro Vidal’s twisting to form a forgery thread in order to provide a yarn that is easily detectable (Non-Final Act. 3; Appeal Br. 4-5). Accordingly, the focus in the decision is on the Examiner’s findings regarding Ottway. Appeal 2021-001382 Application 14/927,139 4 Act. 3). The Examiner concludes it would have been obvious to “pick and choose the required characteristic design, lettering, or pattern in Ottway, such as depicted only by straight lines that are parallel with, perpendicular to, inclined by 45 degrees to the feeding direction or digital font (for example “HI”), in order to achieve the required design, lettering or pattern in an [sic] forgery-preventing yarn.” (Non-Final Act. 3-4). Alternatively, the Examiner determines based on In re Dailey, 357 F.2d 669 (CCPA 1966) and Eskimo Pie Corp. v. Levous, 35 F.2d 120 (3rd Cir. 1929) that change in shape of the letters or images would have been obvious as a mere change in the shape without any change in the functioning of the part (Non-Final Act. 4). Appellant argues the Examiner’s determination that Ottway does not place any limitation on the characteristics of the letters or images and therefore it would have been obvious to modify Ottway to include the claimed letter or image characteristics (i.e., letter or image formed only by straight line/lines) in order to arrive at the claimed design is conclusory (Appeal Br. 4). Appellant argues that the Examiner’s reliance on Dailey and Eskimo Pie are misplaced because unlike the change in shape in those cases with no impact on the item’s functionality, the use of only straight lines to form the images/letters serves the function of providing sufficient spacing between the straight lines to prevent the letter/image from collapsing on itself during printing (Appeal Br. 5; Spec. 5:1-8). The Examiner carries the initial burden of establishing a prima facie case of obviousness. In re Oetiker, 977 F.2d 1443, 1445 (Fed. Cir. 1992). The Examiner concedes that Ottway does not teach using only straight lines to form the letters or images (Non- Final Act. 3). The Examiner relies on unsupported findings regarding the use of only straight lines to form Appeal 2021-001382 Application 14/927,139 5 Ottway’s letters or images (Non-Final Act. 3-4). The Examiner’s reasoning is conclusory because it is challenged by Appellant and the Examiner fails to provide any evidence to show that use of only straight lines in forming letters or images was known. Regarding the alternative rationale based on Dailey and Eskimo Pie, we find that Appellant has shown that using only straight lines to form the images and letters performs the function of preventing collapse of the printed letters and providing the desired spacing in forming the letters (Appeal Br. 5). The Examiner states that Appellant’s citation to page 5 of the Specification does not “provide evidence establishing that only straight, perpendicular or 45 degree lines would, as opposed to curvy lines, in any orientation, are required to make an article with “easily” identified letter or images” (Ans. 6). The Examiner improperly shifts the burden to Appellant to show that curvy lines would not provide the same function recited in the claims. Rather, the Examiner has the initial burden of challenging Appellant’s disclosure by providing evidence to show that using curvy lines to form the letters or images would have the same argued functionality. In this case, the Examiner has not carried the initial burden of establishing a prima facie case of obviousness. The Examiner finds that letters and images on the thread cannot confer patentability to the claims because it is non-functional descriptive material (Ans. 7). The Examiner cites In re Distefano, 808 F.3d 845, 848- 51 (Fed. Cir. 2015), for the proposition that no patentable weight is given to information recorded in any substrate if that printed matter is for informational content only and not functionally or structurally related the substrate (Ans. 7). Appeal 2021-001382 Application 14/927,139 6 The court in Distefano explained the printed matter analysis has two requirements: (1) determining whether the claim limitation is directed toward printed matter and (2) if printed matter, then is the printed matter functionally or structurally related to the substrate holding the printed matter. Distefano, 808 F.3d at 848. A limitation is considered printed matter only if it claims the content of the information. Id. The court’s survey of printed matter case law determined that printed matter must be matter claimed for what it communicates. Id. at 850. Only if the limitation is considered printed matter does one turn to the question whether the printed matter is functionally or structurally related to the substrate. Id. at 850. In the present case, the limitation in question recites “letters and images printed on the base sheet . . . wherein all the letters or images printed on the base sheet are depicted only by straight line/straight lines which is/are parallel with, perpendicular to, inclined by 45 degrees to the feeding direction of the base sheet on an occasion of printing the letters or images . . . .” Although the letters or images are printed on the sheet, the letters or images are just characters, the claim does not recite these letters or images communicate any information or content. In other words, we find the letters or images do not claim any content of the information and thus are not printed material in the context of the printed matter rule as discussed in Distefano. Accordingly, the printed material case law does not apply to the current facts. We reverse the Examiner’s § 103 rejection (1) based on the combination of Ottway, Teodoro Vidal and the § 103 rejection (3) based on Appeal 2021-001382 Application 14/927,139 7 the teachings of Ottway, Teodoro Vidal and Kim3. Rejection (3) relies on the same flawed analysis regarding Ottway and Teodoro Vidal. Regarding rejection (2), the Examiner takes two approaches. First, the Examiner relies on the same flawed analysis of Ottway in concluding that using only straight lines to form the letters or images would have been obvious (Non-Final Act. 4-5). We are unpersuaded by that analysis for the same reasons discussed above. Second, the Examiner finds Seki teaches a forgery preventing yarn having desired normal letters, character or figure, which would encompass a digital font (Non-Final Act. 5). The Examiner concludes it would have been obvious to modify Ottway’s letter or pattern to include only straight lines that are parallel with, perpendicular to, inclined by 45 degrees to the feeding direction or digital font because Seki teaches this is an important element for enhancing the effects in an aesthetic and design field (Non-Final Act. 6). Appellant argues the Examiner’s rejection including Seki are based on logical leaps and misstatements (Appeal Br. 7). Appellant argues that Seki does not disclose a letter or pattern must be only of straight lines that are parallel with, perpendicular to, inclined by 45 degrees to the feeding direction or digital font (Appeal Br. 7). Appellant argues Seki does not disclose that a “normal character” includes letters or images depicted only by straight lines which are parallel with, perpendicular to, inclined by 45 degrees to the feeding direction (Appeal Br. 8). Appellant contends that Seki shows that the normal font includes letters formed from curved lines like the letters C, D, B (Appeal Br. 8). We agree. 3 The Examiner relies on Kim to teach the use of rayon as the base sheet material (Non-Final Act. 8). Kim does not cure the deficiencies in Ottway. Appeal 2021-001382 Application 14/927,139 8 The Examiner does not explain how Seki’s teachings of forming a normal font would encompass or suggest a digital font (Non-Final Act. 5). The Examiner’s findings are unsupported and appear to be based on impermissible hindsight. The Examiner has not established that forming letters or images only from straight lines would have been obvious in light of Ottway as modified by Teodoro Vidal and Seki. We reverse the Examiner’s § 103 rejection of claims 1, 3, 9, 15, 17, 19, 20, and 22-24 over Ottway in view of Teodoro Vidal and Seki. Rejections (4) to (7) These rejections rely on Seki to teach forming the letters or images by using only straight lines or a digital font (Non-Final Act. 9-12). These are the same flawed Examiner findings discussed above in the context of rejection (2). The Examiner has not shown that Seki teaches or would have suggested forming the letters or images only from straight lines that are parallel with, perpendicular to, inclined by 45 degrees to the feeding direction. The Examiner has not satisfied the initial burden of establishing a prima facie case of obviousness. Oetiker, 977 F.2d at 1445. We reverse the Examiner’s § 103 rejections (4) to (7). DECISION Claims Rejected 35 U.S.C. § Reference(s)/Basis Affirmed Reversed 1, 3, 9, 15, 17 103 Ottway, Teodoro Vidal 1, 3, 9, 15, 17 1, 3, 9, 15, 17, 19, 20, 22-24 103 Ottway, Teodoro Vidal, Seki 1, 3, 9, 15, 17, 19, 20, 22-24 Appeal 2021-001382 Application 14/927,139 9 Claims Rejected 35 U.S.C. § Reference(s)/Basis Affirmed Reversed 28, 30-32 103 Ottway, Teodoro Vidal, Kim 28, 30-32 1, 3, 9, 15, 17 103 Seki, Teodoro Vidal 1, 3, 9, 15, 17 19, 20, 22-24 103 Seki 19, 20, 22-24 28, 30-32 103 Seki, Kim 28, 30-32 Overall Outcome 1, 3, 9, 15, 17, 19, 20, 22-24, 28, 30-32 ORDER REVERSED