ASSA ABLOY AB

Patent Trials and Appeals Board

Jan 5, 2022

2021000999 (P.T.A.B. Jan. 5, 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. 16/375,186 04/04/2019 Frantz Mercier 5483.282US1 1540 159468 7590 01/05/2022 Schwegman Lundberg & Woessner/Assa-HID P.O. Box 2938 Minneapolis, MN 55402 EXAMINER THOMAS, ALEXANDER S ART UNIT PAPER NUMBER 1783 NOTIFICATION DATE DELIVERY MODE 01/05/2022 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): SLW@blackhillsip.com uspto@slwip.com PTOL-90A (Rev. 04/07) UNITED STATES PATENT AND TRADEMARK OFFICE BEFORE THE PATENT TRIAL AND APPEAL BOARD Ex parte FRANTZ MERCIER Appeal 2021-000999 Application 16/375,186 Technology Center 1700 Before LINDA M. GAUDETTE, JAMES C. HOUSEL, and CHRISTOPHER C. KENNEDY, 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 1-11, 15, and 16.2 We have jurisdiction under 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 ASSA ABLOY AB as the real party in interest. Appeal Brief (“Appeal Br.”) filed September 11, 2020, 3. 2 The Examiner objects to pending claims 12-14 and 17 which are not before us on appeal. Final Office Action dated April 13, 2020, 1 and 4. Appeal 2021-000999 Application 16/375,186 2 CLAIMED SUBJECT MATTER The invention recited in the claims on appeal relates to a secure multilayer structure to be used in identification documents, such as identification cards, which allows more flexibility in its production. Specification (“Spec.”) filed April 4, 2019, ¶ 7.3 In particular, the invention is directed to a secure multilayer structure with a security element located adjacent to a window through a masking layer of the structure. Id. at Title and ¶ 10. Appellant discloses that the security element includes a photoluminescent agent and is positioned between a base layer and the masking layer of the structure. Id. ¶ 8. Appellant further discloses that the presence of the photoluminescent agent can be checked by illuminating the edge of the window and viewing re-radiated luminescent light emerging from the masking layer through the window edge. Id. Sole independent claim 1, reproduced below from the Claims Appendix to the Appeal Brief, is illustrative of the claimed subject matter: 1. A secure multilayer structure comprising: a base layer; a first masking layer comprising a window opened in the first masking layer, said window comprising an edge; and a security element including a photoluminescent agent positioned between the base layer and the first masking layer, adjacent to the window edge, the security element configured such that when the window edge is illuminated, the photoluminescent agent re-radiates luminescent light via the window. 3 This Decision also cites to the Examiner’s Answer (“Ans.”) dated September 30, 2020, and the Reply Brief (“Reply Br.”) filed November 24, 2020. Appeal 2021-000999 Application 16/375,186 3 REFERENCES The Examiner relies on the following prior art: Name Reference Date Camus US 2014/0151996 A1 June 5, 2014 REJECTIONS The Examiner maintains, and Appellant requests our review of, the following rejections: 1. Claims 1-6, 9, 15, and 16 under 35 U.S.C. § 102(a)(1) as anticipated by Camus; and 2. Claims 7, 8, 10, and 11 under 35 U.S.C. § 103 as unpatentable over Camus. OPINION We review the appealed rejections for error based upon the issues Appellant identifies, and in light of the arguments and evidence produced thereon. 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) (“[I]t has long been the Board’s practice to require an applicant to identify the alleged error in the examiner’s rejections.”). After considering Appellant’s arguments and the evidence of record, we are persuaded of reversible error in the Examiner’s rejections for substantially the reasons set forth in the Appeal and Reply Briefs. We offer the following for emphasis. Rejection 1: Anticipation The Examiner rejects claims 1-6, 9, 15, and 16 under 35 U.S.C. § 102(a)(1) as anticipated by Camus. Ans. 3. For reasons given below, we need only discuss claim 1. The Examiner finds that Camus discloses a secure Appeal 2021-000999 Application 16/375,186 4 multilayer structure as recited in claim 1, comprising, in relevant part, a security element 15, 16 including a photoluminescent agent positioned between the base layer and the masking layer, adjacent to the window edge, such that “[l]ight hitting the [masking] layer 17 in Camus will strike the phosphorescent layers 15 and 16 which will inherently re-radiate luminescent light via the window, including the edges of the window in layer 17.” Id. Appellant argues that Camus does not disclose that elements 15, 16 include photoluminescent agents. Appeal Br. 7. In support of this position, Appellant asserts that Camus describes a pattern that may be printed with, for example, fluorescent or phosphorescent inks, wherein this pattern refers to first and second patterns 6, 7, rather than later described elements 15, 16. Id. at 7-8. Appellant further asserts that Camus only describes that elements 15, 16 may be “obtained by selective, positive or negative printings, perforations, depositions and/or voids of materials,” and does not indicate that elements 15, 16 could include photoluminescent agents. Id. at 8. In addition, Appellant contends that Camus fails to provide any reason, suggestion, or motivation for including photoluminescent agents in elements 15, 16, especially because these elements “are intended simply to be ‘comparison pattern[s]’ with ‘fixed,’ non-varying appearance.” Id. Appellant further argues that Camus’ elements 15, 16 are not adjacent to an edge of the window in layer 17. Appeal Br. 8. Appellant asserts that not only does Camus not describe these elements as adjacent to the edge of the window in layer 17, Camus provides “a clear and unambiguous space or gap along axis A between elements 15 and 16 (i.e., the lettering ‘AWS’) and the edge of the alleged window in layer 17,” as depicted in Figures 3a and Appeal 2021-000999 Application 16/375,186 5 3b. Id. at 8-9 (reproducing Figures 3a and 3b, with an exploded view of a portion of Figure 3a, along axis A). As such, Appellant contends that Figures 1a and 1b, which appear to depict elements 15, 16 as extending to the edge of the window in layer 17, are not accurate or reliable representations of Camus’ secure multilayer structure. Id. at 10. As indicated earlier, Appellant’s arguments are persuasive of reversible error. A reference anticipates a claim if it “disclose[s] each and every element of the claimed invention, whether it does so explicitly or inherently.” In re Gleave, 560 F.3d 1331, 1334 (Fed. Cir. 2009) (citation omitted). The elements “must be arranged or combined in the same way as in the claim.” Id. (internal quotes and citation omitted). However, for a proper anticipation rejection, the reference must clearly and unequivocally disclose the claimed [invention] or direct those skilled in the art to the [invention] without any need for picking, choosing, and combining various disclosures not directly related to each other by the teachings of the cited reference. Such picking and choosing may be entirely proper in the making of a § 103, obviousness rejection . . . but it has no place in the making of a § 102, anticipation rejection. In re Arkley, 455 F.2d 586, 587 (CCPA 1972). Here, Camus’ teachings regarding how and from what the patterns 6, 7 are made are set forth in paragraphs 25, 27, 30, 31, 41, and 44-48. In particular, Camus teaches that patterns 6, 7 may be printed with a variety of possible inks, including fluorescent and phosphorescent inks. Camus ¶ 45. Camus further discloses a variety of properties and materials that the masking adhesive layer 17 may have, including many that would inhibit the ability to see any pattern formed underneath this layer. Id. ¶ 52. Camus’ teachings regarding reference pattern elements 15, 16 are set forth in Appeal 2021-000999 Application 16/375,186 6 paragraphs 94-96 and 99. As Appellant asserts, Camus does not specifically teach an embodiment in which both patterns 6, 7 and reference patterns 15, 16 are each printed with a photoluminescent ink such that reference patterns are visible on the edge of the window in layer 17. At best, arriving at this combination requires picking and choosing from Camus’ various options for each structure, which is improper for an anticipation rejection. Arkley, 455 F.2d at 589. In addition, as Appellant contends, Camus fails to describe reference elements as extending to or being adjacent to the edge of the window in layer 17. On the other hand, the Examiner correctly finds that Camus appears to show in Figures 1a and 1b that reference elements are adjacent the window. Camus describes the Figures 1a and 1b as transverse cross sections of the secure multilayer structure along axis A of Figures 3a and 3b. Thus, elements 15, 16 of Figures 1a and 1b are not accurate representations of these elements from Figures 3a and 3b. As such, it appears that Camus’ depiction of elements 15, 16 as extending to the edge of the window in layer 17 is accidental. Accidental disclosure in a drawing may, under certain circumstances, support a finding of anticipation. In re Meng, 492 F.2d 843, 848-849 (CCPA 1974) (“[A] claimed invention may be anticipated or rendered obvious by a drawing in a reference, whether the drawing disclosure be accidental or intentional.”); In re Seid, 161 F.2d 229, 231 (1947) (“[A]n accidental disclosure, if clearly made in a drawing, is available as a reference.”); In re Bager, 47 F.2d 951, 953 (CCPA 1931) (“Description for the purposes of anticipation can be by drawings alone as well as by words.” (citation omitted)). However, whether an accidental showing in a drawing is or is not Appeal 2021-000999 Application 16/375,186 7 an anticipation of a later invention depends generally on the facts in each particular case. Bager, 47 F.2d at 952-953. “[A]n accidental showing in a prior patent does not anticipate a later invention where the thing so shown is not essential to the first invention, and was not designed, adapted, or used to perform the function which it performs in the second invention, and was neither intended nor appreciated by the patentee, and when the first patent contains no suggestion of the way in which the result sought is accomplished by the second inventor.” Id. at 953 (citations omitted). In this instance, the Examiner fails to direct our attention to any purpose or design for Camus’ accidental showing of reference patterns 15, 16 extending to the edge of the window in layer 17. Indeed, Camus merely describes reference pattern 15 as received in edge or lateral zones 14 “in the vicinity of the first pattern 6 so as to form a comparison pattern with the latter.” Camus ¶¶ 94, 95. Camus similarly describes reference pattern 16 as received in edge or lateral zones 14 “in the vicinity of the second pattern 7 in order to serve as a comparison element.” Id. The Examiner also fails to direct our attention to any suggestion in Camus of the manner in which Appellant utilizes the photoluminescent feature on the window edge. Bager, 47 F.2d at 953. Therefore, we do not find that Camus’ apparent accidental disclosure of reference patterns extending to the edge of the window in Figures 1a and 1b anticipates Appellant’s claimed photoluminescent feature positioned between the base and masking layers adjacent to the edge of the window in the masking layer as recited in claim 1. Accordingly, we do not sustain the Examiner’s anticipation rejection of claim 1 and dependent claims 2-6, 9, 15, and 16 by Camus. Rejection 2: Obviousness Appeal 2021-000999 Application 16/375,186 8 The Examiner rejects claims 7, 8, 10, and 11 under 35 U.S.C. § 103 as unpatentable over Camus. Ans. 3-4. The Examiner relies on the same erroneous findings discussed above, including Camus’ accidental disclosure of a photoluminescent security element adjacent to the window edge such that when the window edge is illuminated, the photoluminescent agent in the element re-radiates luminescent light via the window. Accordingly, for the same reasons given above, we likewise do not sustain the Examiner’s obviousness rejection of claims 7, 8, 10, and 11 over Camus. 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 1-11, 15, and 16 is reversed. DECISION SUMMARY In summary: Claims Rejected 35 U.S.C. § Reference(s)/Basis Affirmed Reversed 1-6, 9, 15, 16 102(a)(1) Camus 1-6, 9, 15, 16 7, 8, 10, 11 103 Camus 7, 8, 10, 11 Overall Outcome 1-11, 15, 16 REVERSED