Ex Parte Barreto et al

Patent Trial and Appeal Board

Oct 30, 2012

11223267 (P.T.A.B. Oct. 30, 2012)

UNITED STATES PATENT AND TRADEMARK OFFICE
__________

BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
__________

Ex parte MARCOS A. BARRETO and LILLIAM E. GONZALEZ
__________

Appeal 2011-006837
Application 11/223,267
Technology Center 1600
__________

Before DEMETRA J. MILLS, JEFFREY N. FREDMAN, and STEPHEN
WALSH, Administrative Patent Judges.

MILLS, Administrative Patent Judge.

DECISION ON APPEAL

This is an appeal under 35 U.S.C. § 134. The Examiner has rejected
the claims for anticipation, obviousness and obviousness-type double
patenting. We have jurisdiction under 35 U.S.C. § 6(b).
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STATEMENT OF THE CASE
The following claims are representative and read as follows:
1. A method for labeling a substrate comprising:
positioning said substrate adjacent to an ink material dispenser; and
selectively depositing an ink onto said substrate with said ink material
dispenser in which said ink comprises:
a number of first colorants configured to exhibit a visible fluorescent
emissive profile when exposed to visible light; and
a number of second colorants configured to exhibit a visible
fluorescent emissive profile when exposed to ultra violet light,
in which the combination of said first and second colorants within
said ink is configured to exhibit a known spectral profile when exposed to a
number of known wavelengths of electromagnetic radiation, and
in which said substrate comprises a pharmaceutical product.

13. A method for labeling a pharmaceutical product comprising:
positioning said pharmaceutical product adjacent to a inkjet material
dispenser; and
selectively jetting an edible ink onto said pharmaceutical product with said
inkjet material dispenser;
in which said ink comprises:
a number of first colorants configured to exhibit a visible
fluorescent emissive profile when exposed to visible light; and
a number of second colorants configured to exhibit a visible
fluorescent emissive profile when exposed to ultra violet light,
in which the combination of said first and second colorants
within said ink is configured to exhibit a known spectral profile when
exposed to a number of known wavelengths of electromagnetic
radiation.

17. A method for marking a pharmaceutical product, comprising:
positioning said pharmaceutical product adjacent to a first inkjet
material dispenser;
selectively jetting a first edible ink onto said pharmaceutical product
with said first inkjet material dispenser;
positioning said pharmaceutical product adjacent to a second inkjet
material dispenser; and
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selectively jetting a second edible ink onto said first edible ink with
said second inkjet material dispenser;
wherein said first edible ink is configured to exhibit a visible emissive
profile when exposed to a visible light; and
said second edible ink is configured to exhibit a known fluorescent
emissive profile when exposed to an ultraviolet light.

Cited References

The Examiner relies on the following prior art references:

Shastry et al. WO 2004/003089 A1 Jan. 8, 2004
Dickinson et al. GB 2316682 A Mar. 4, 1998
Barreto US 7,166,154 B2 Jan. 23, 2007
Chinea et al. US 10/946,883 Sep. 22, 2004
Barreto et al. US 11/097,087 Mar. 31, 2005

Lloyd et al., Prediction of Peak Wavelengths and Intensities in
Synchronously Excited Fluorescence Emission Spectra, 49 Analytical
Chemistry, pp. 1710-1715 (1977).

Grounds of Rejection
 Claims 1-8, 10-20 are rejected under 35 U.S.C. §102(b) as being
anticipated by Shastry, as evidenced by Lloyd.

 Claims 1-20 are rejected under 35 U.S.C. §103(a) as being
unpatentable over Shastry in view of Dickinson.

 Claims 1-20 rejected on the ground of nonstatutory obviousness-type
double patenting as being unpatentable over claims 31-53 of U.S.
Patent No. 7,166,154.

 Claims 1-20 are provisionally rejected on the ground of nonstatutory
obviousness-type double patenting as being unpatentable over claims
29-50 of copending Application No.1 0/946,883.

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 Claims 1-20 are provisionally rejected on the ground of nonstatutory
obviousness-type double patenting as being unpatentable over claims
1-22 of copending Application No. 11/097,087.

FINDINGS OF FACT
The Examiner‟s findings of fact are set forth in the Answer at pages 4-
10.
PRINCIPLES OF LAW
In order for a prior art reference to serve as an anticipatory reference,
it must disclose every limitation of the claimed invention, either explicitly or
inherently. See In re Schreiber, 128 F.3d 1473, 1477(Fed. Cir. 1997). To
anticipate, every element and limitation of the claimed invention must be
found in a single prior art reference, arranged as in the claim. Karsten Mfg.
Corp. v. Cleveland Golf Co., 242 F.3d 1376, 1383 (Fed. Cir. 2001). ]
“In rejecting claims under 35 U.S.C. § 103, the examiner bears the
initial burden of presenting a prima facie case of obviousness. Only if that
burden is met, does the burden of coming forward with evidence or
argument shift to the applicant.” In re Rijckaert, 9 F.3d 1531, 1532 (Fed.
Cir. 1993) (citations omitted). In order to determine whether a prima facie
case of obviousness has been established, we consider the factors set forth in
Graham v. John Deere Co., 383 U.S. 1, 17 (1966): (1) the scope and content
of the prior art; (2) the differences between the prior art and the claims at
issue; (3) the level of ordinary skill in the relevant art; and (4) objective
evidence of nonobviousness, if present.
“The combination of familiar elements according to known methods
is likely to be obvious when it does no more than yield predictable results.”
KSR Int’l Co. v. Teleflex Inc., 550 U.S. 398, 416 (2007).
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Discussion anticipation
 Claims 1-8, 10-20 are rejected under 35 U.S.C. §102(b) as being
anticipated by Shastry, as evidenced by Lloyd.

ISSUE
The Examiner concludes that Shastry teaches each element claimed.
In particular, “Shastry discloses a method of inkjet printing edible substrates
comprising the steps of positioning an edible substrate next to a
p[iez]oelectric ink-jet printhead and ejecting droplets onto the substrate in
accordance with data signals to form an image. … Shastry discloses printing
on pharmaceutical tablets and on food products such as candies. … Shastry
discloses using the ink Red Dye No.3, which is otherwise named
(Erythrosine) and meets the limitations of a colorant that exhibits a
fluorescence emissive profile when exposed to a visible light with a
wavelength of ~ 510 nm, is a fluorescein based dye that fluoresces between
520 and 700 nm, and is edible.” (Ans. 4.)
Appellants argue that
Shastry simply teaches printing using a white ink reservoir and cyan,
magenta, and yellow as the other colors. However, Shastry does not
teach or suggest both a number of first colorants configured to exhibit
a visible fluorescent emissive profile when exposed to visible light
and a number of second colorants configured to exhibit a visible
fluorescent emissive profile when exposed to ultra violet light
combined in a single ink. Shastry makes no mention of certain inks'
ability to exhibit a visible fluorescent emissive profile when exposed
to ultra violet light, and fails to teach or suggest combining such
colorants together.

(App. Br. 12.)

The issue is: Does Shastry teach each and every element, as claimed?
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ANALYSIS
We do not find that the Examiner has provided sufficient evidence to
support a prima facie case of anticipation.
We agree with Appellants that the claims require that the first colorant
and second colorant be different colorants. This is consistent with the plain
language of claim 1 and with paragraphs [0029], [0038] and [0058] of the
Specification evidencing a different colorant configured to exhibit a visible
fluorescent emissive profile when exposed to visible light from the second
colorants configured to exhibit a visible fluorescent emissive profile when
exposed to ultra violet light. Thus we agree with Appellants that “the
teaching within Shastry of Red Dye No. 3 cannot support a rejection of both
a first and second colorant.” (Reply Br. 5.) While we acknowledge that
Shastry does teach mixtures of dyes or colorants at paragraphs [0023]-
[0026], the Examiner does not rely on these colorants in the rejection and
has not established with sufficient argument or evidence that such additional
colorants meet the limitations of claim 1.
We are constrained to find, on the record before us, that the Examiner
has not established that Shastry teaches each and every element claimed, and
the anticipation rejection is reversed.

Discussion Obviousness
 Claims 1-20 are rejected under 35 U.S.C. §103(a) as being
unpatentable over Shastry in view of Dickinson.

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Appellants provide separate argument for claims 1, 3, 13, and 17 in the
Brief at pages 23-35. The arguments for each of these claims are similar so
we address them together.
ISSUE
Claims 1, 3, 13 and 17
The Examiner argues that
Shastry does not specifically disclose using a dye mixture comprising
a dye that is invisible under white light conditions and mixtures of
invisible dyes with visible dyes.
Dickinson teaches a method, system, and series of invisible dyes, for
use in inkjet printing. Dickinson teaches a method for labeling a
substrate by positioning a material adjacent to an ink material
dispenser and selectively depositing ink onto the substrate. (See claim
9 of Dickinson.) Dickinson teaches using "invisible inks" for a
variety of purposes such as invisible bar codes and invisible security
markings. (See page 2, lines 20-25.) The inks used exhibit known
fluorescence profiles. In claim 10 a system in which an image is
generated, translated into ink dispensing commands, and selectively
deposited to form an image is disclosed. Dickinson teaches a series of
invisible inks which are invisible under ordinary light, but visible
under ultraviolet light. (See page 3, lines 1-25.) The inks eosin Y and
phloxine B are disclosed which can be excited by visible light at
around 510 nm, are invisible under white light conditions and are
fluorescein based dyes that fluoresce between ~ 520 nm and 700 nm.
Dickinson teaches making an image dyes which are both visible and
invisible when exposed to visible light. (See page 8, lines 3-15.)
Dickinson also teaches the use of the inks to print invisible bar codes.
(See page 22, line 24.)
It would have been prima facie obvious to one of ordinary skill in the
art at the time of the invention to combine the visible and invisible
dyes for ink-jet printing disclosed by Dickinson with the
pharmaceutical labeling method disclosed by Shastry in order to form
printed pharmaceuticals with invisible images such as barcodes and
security markings. The skilled artisan would have been motivated to
make this combination in order to form invisibly tagged
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pharmaceuticals that would have the benefit of allowing the tracking
of the pharmaceuticals covertly, for the tracing of often abused
pharmaceuticals. The combination of known ink composition and
methods for their use in ink-jet printing into another known method
for ink-jet printing would have been obvious to one of ordinary skill
in the art at the time of the invention, as both inventions are drawn to
analogous arts, and the substitution of the invisible dye for a visible
dye would have readily envisaged.

(Ans. 6-8.)

Appellants contend that

Dickinson does no[t] teach or suggest an "ink compris[ing] a number
of first colorants configured to exhibit a visible fluorescent emissive
profile when exposed to visible light, and a number of second
colorants configured to exhibit a visible fluorescent emissive profile
when exposed to ultra violet light, in which the combination of said
first and second colorants within said ink is configured to exhibit a
known spectral profile when exposed to a number of known
wavelengths of electromagnetic radiation .... " (Claim 1). In a similar
manner as taught in Shastry, Dickinson simply teaches a number of
ink pens or reservoirs that may contain an invisible ink and other
colors such as black, cyan, magenta, and black. (Dickinson, p. 8, 1. 16
through p. 9, 1. 2). However, Dickinson does not teach or suggest
both a number of first colorants configured to exhibit a visible
fluorescent emissive profile when exposed to visible light and a
number of second colorants configured to exhibit a visible fluorescent
emissive profile when exposed to ultra violet light.

(Reply Br. 18-19.)

The issue is: Has the Examiner established that the combination of
Shastry and Dickinson teach a number of first colorants configured to
exhibit a visible fluorescent emissive profile when exposed to visible light
and a number of second colorants configured to exhibit a visible fluorescent
emissive profile when exposed to ultra violet light, as claimed.
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ANALYSIS
We conclude the Examiner has provided sufficient evidence to
support a prima facie case of obviousness. In particular, Shastry describes
using a piezoelectric print head to print invisible ink or other colorant on a
pharmaceutical product. (Shastry, [0019]; Ans. 4-5.) Shastry discloses
using the ink Red Dye No.3, which is otherwise named (Erythrosine) and
meets the limitations of a colorant that exhibits a fluorescence emissive
profile when exposed to a visible light with a wavelength of ~ 510 nm, and
is a fluorescein based dye that fluoresces between 520 and 700 nm, and is
edible. (Ans. 4.)
Dickinson page 8, lines 3-24, describes printing with a reservoir filled
with invisible ink which is visible when exposed to ultra violet light, and
with the remaining reservoir filled with black ink. Dickinson teaches a
series of invisible inks which are invisible under ordinary light, but visible
under ultraviolet light. (See page 3, lines 1-25.) We, therefore, agree with
the Examiner that it would have been prima facie obvious to one of ordinary
skill in the art at the time of the invention to combine the first colorants
configured to exhibit a visible fluorescent emissive profile when exposed to
visible light of Shastry with the second colorants configured to exhibit a
visible fluorescent emissive profile when exposed to ultra violet light, for
ink-jet printing disclosed by Dickinson with the pharmaceutical labeling
method disclosed by Shastry in order to form printed pharmaceuticals with
invisible images such as barcodes and security markings.
Appellants have failed to rebut the disclosure of Dickinson teaching
both the use of visible and invisible colorants, or that the prior art together
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teaches first and second colorants with visible fluorescent emissive profiles,
as claimed.
The obviousness rejection is affirmed.

Discussion Obviousness-type Double patenting Rejections

 Claims 1-20 rejected on the ground of nonstatutory obviousness-type
double patenting as being unpatentable over claims 31-53 of U.S.
Patent No. 7,166,154.

 Claims 1-20 are provisionally rejected on the ground of nonstatutory
obviousness-type double patenting as being unpatentable over claims
29-50 of copending Application No.10/946,883.

 Claims 1-20 are provisionally rejected on the ground of nonstatutory
obviousness-type double patenting as being unpatentable over claims
1-22 of copending Application No. 11/097,087.

PRINCIPLES OF LAW
“Because nonstatutory double patenting compares earlier and later
claims, an earlier patent‟s disclosure is not available to show
nonstatutory double patenting. See Gen. Foods Corp. v.
Studiengesellschaft Kohle mbH, 972 F.2d 1272, 1281-82 (Fed. Cir.
1992). Of course, the earlier patent‟s disclosure may register on the
patentability scale if that patent qualifies as prior art under 35 U.S.C.
§ 102, which is generally not the case. Id.” Geneva Pharms., Inc. v.
GlaxoSmithKline PLC, 349 F.3d 1373, 1385, 68 USPQ2d 1865, 1875
(Fed. Cir. 2003).

Obviousness-type double patenting entails a two-step analysis. First,
the allegedly conflicting claims are construed and, second, the
difference(s) between the claims are considered to determine whether
the claims are patentably distinct. See Eli Lilly & Co. v. Barr Labs.,
Inc., 251 F.3d 955, 968, 58 USPQ2d 1869, 1878 (Fed. Cir. 2001). “A
later patent claim is not patentably distinct from an earlier patent
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claim if the later claim is obvious over, or anticipated by, the earlier
claim.” Id.

FINDINGS OF FACT
Representative claim 31 of U.S. Patent No. 7,166,154 follows:
31. A method for labeling a substrate comprising:
positioning said substrate adjacent to an inkjet material
dispenser; and
selectively jetting an edible ink onto said substrate with
said inkjet material dispenser;
wherein said edible ink includes a colorant configured to
fluoresce in a visible light range when exposed to an
ultraviolet light, and wherein said ink is invisible when
viewed under white light conditions, said edible ink
includes a jettable vehicle.
Representative claim 29 of copending Application No. 10/946,883
follows:
29. A method for labeling a UV-fluorescing substrate comprising:
positioning said UV-fluorescing substrate adjacent to an inkjet material
dispenser; and selectively jetting an edible, invisible, non-UV
fluorescing ink onto said UV-fluorescing substrate with said inkjet material
dispenser; wherein said edible, invisible, non-UV fluorescing ink is
configured to selectively block a fluorescence of said UV fluorescing
substrate when exposed to an ultraviolet light.
Representative claim 41 currently pending in copending Application
No. 11/097,087 follows:

41. A method for preventing a counterfeiting of pharmaceuticals,
comprising marking a pharmaceutical with an edible ink, wherein said edible
ink is configured to exhibit a known fluorescent emissive profile when
exposed to an ultraviolet light.

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ANALYSIS
We do not find that the Examiner has established a prima facie case of
obviousness-type double patenting with respect to over claims 31-53 of U.S.
Patent No. 7,166,154 or claims 29-50 of copending Application No.
10/946,883.
With respect to the claims of the „154 patent, the patent claims do not
suggest a number of first colorants configured to exhibit a visible fluorescent
emissive profile when exposed to visible light as in claim 1.
With respect to the claims 29-50 of copending Application No.
10/946,883, the Application claims to placing an invisible, non-UV
fluorescing ink onto said UV-fluorescing substrate, do not suggest a second
colorants configured to exhibit a visible fluorescent emissive profile when
exposed to ultra violet light, as claimed.
These obviousness-type double patent rejections are reversed.
The obviousness type double patenting rejection over copending
Application No. 11/097,087 is moot in view of the abandonment of that
application.

CONCLUSION OF LAW
The anticipation rejection is reversed, the obviousness rejection is
affirmed. The obviousness-type double patenting rejections over 31-53 of
U.S. Patent No. 7,166,154 or claims 29-50 of copending Application No.
10/946,883 are reversed. The obviousness-type double patenting rejection
over claim 41 currently pending in copending Application No. 11/097,087 is
moot.

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TIME PERIOD FOR RESPONSE
No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. § 1.136(a).

AFFIRMED

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