Ex Parte Chabut et al

Patent Trial and Appeal Board

Mar 31, 2016

12525547 (P.T.A.B. Mar. 31, 2016)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE
12/525,547 06/09/2010
41754 7590
THE JANSSON FIRM
3616 Far West Blvd
Ste 117-314
AUSTIN, TX 78731
04/04/2016
FIRST NAMED INVENTOR
Francoise Chabut
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.
76.1265AF 9052
EXAMINER
LEWIS, JUSTIN V
ART UNIT PAPER NUMBER
3725
NOTIFICATION DATE DELIVERY MODE
04/04/2016 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):
law firm @thej anssonfirm. com
Pehr@thejanssonfirm.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte FRANCOISE CHABUT, DENIS VERE, and
CHRISTOPHE MARTINAT
Appeal2014-003040
Application 12/525,547
Technology Center 3700
Before MICHAEL L. HOELTER, ANNETTE R. REIMERS, and
GORDON D. KINDER, Administrative Patent Judges.
REIMERS, Administrative Patent Judge.
DECISION ON APPEAL
STATEMENT OF THE CASE
Francoise Chabut et al. (Appellants) appeal under 35 U.S.C. § 134(a)
from the Examiner's decision to reject under 35 U.S.C. § 103(a) claims 4
and 5 as unpatentable overNarita (US 2003/0180482 Al; pub. Sept. 25,
2003) and Isono (US 5,956,067; iss. Sept.21, 1999). Claims 1-3 have been
cancelled. 1 We have jurisdiction under 35 U.S.C. § 6(b).
We AFFIRM.
1 In the Reply Brief, Appellants state: (1) "Appellants co-file an Amendment
herewith cancelling Claims 1 - 3. Accordingly, Claims 1 - 3 are removed
from consideration on Appeal"; and (2) "Claims 4 and 5 remain presented
[for] review on appeal." Reply Br. 1-2 (filed Oct. 28, 2013). Accordingly,
claims 4 and 5 are the only claims before us for review.
Appeal2014-003040
Application 12/525,547
CLAIMED SUBJECT MATTER
The claimed subject matter relates to "[personalization] graphics of
identification documents." Spec. 1, 11. 1-2; Fig. 3.
Claims 4 and 5, the claims on appeal, are illustrative of the claimed
subject matter and recite: 2
4. A process for pnntmg an identification document
comprising a body where at least one of the main surfaces forms
a print surface, on which are printed an artwork layer and/or a
printed personalized information layer printed over the art work
layer by means of an ink ribbon, wherein the at least one printing
step using the ink ribbon is achieved by thermal transfer using
the ink ribbon including a protective overlay, and the process
further comprises adding a reinforced protective film to the print
surface, so that the protective overlay of the ink ribbon enables
adherence of the reinforced protective film on the ink transferred
to the print surface.
5. A method of producing an identification card using: a
protective overlay of a thermal transfer ink ribbon for making
adhesive means bet\~1een the ii1k from the ii1k ribbon transferred
to a print surface and a reinforced protective film covering the
print surface.
ANALYSIS
In the Reply Brief, Appellants states: "Appellants have reviewed the
Examiner's reasoning and withdraw that portion of the argument
(Appeal Brief, Page 8, Line 16) ["The receptive layer [ofNarita] is not part
of the security element"] and concede that Narita's receptive layer does
indeed form part ofNarita's security device." Reply Br. 2; see also Appeal
Br. 8. Appellants also state: "Appellants have withdrawn Claims 1 - 3 from
2 We refer to the Amendment to the Claims filed Oct. 28, 2013.
2
Appeal2014-003040
Application 12/525,547
consideration. Claims 4 and 5 remain presented [for] review on appeal." Id.
Further, throughout the Reply Brief, Appellants make assertions in
reference to claim language explicitly recited in cancelled claim 1. Compare
Reply Br. 2--4, and Appeal Br. 18, Claims App., Claim 1 (filed Apr. 8,
2013). 3 In the one instance where Appellants do reference claim 4,
Appellants merely reiterate the Examiner's findings for claim 4. See Reply
Br. 4. However, Appellants do not apprise us of error in those findings. See
id.
Additionally, in the Reply Brief, Appellants raise for the first time
new assertions regarding the claims. Reply Br. 4---6. We need not address
the substance of those assertions, however, for procedural reasons. In other
words, in the Appeal Brief, Appellants present arguments for patentability of
cancelled device claim 1. See Appeal Br. 5-15. Appellants do not present
separate arguments for patentability of process claim 4 and method claim 5
in the Appeal Brief (see id. at 16), and thus did not set forth their arguments
as to these claims prior to the Reply Brief to permit the Examiner an
opportunity to fully respond. Moreover, having "concede[d] that Narita's
receptive layer does indeed form part ofNarita's security device,"
Appellants present arguments for Narita in view of Isono in the Reply Brief
different from those presented in the Appeal Brief. See Reply Br. 2, 4---6;
3 We note that cancelled claim 1 calls for "an identification document";
whereas, claim 4 calls for "a process for printing an identification document"
and claim 5 calls for "a method of producing an identification card." See
Appeal Br. 18, Claims App., Claim 1; Amendment to the Claims (referenced
supra note 2).
3
Appeal2014-003040
Application 12/525,547
contra Appeal Br. 8-15. 4 See also 37 C.F.R. § 41.41(b)(2) (2015) ("Any
argument raised in the reply brief which was not raised in the appeal brief, or
is not responsive to an argument raised in the examiner's answer ... will not
be considered by the Board for purposes of the present appeal, unless good
cause is shown."). Consequently, based on the record before us, Appellants
do not apprise us of Examiner error.
Accordingly, for the foregoing reasons, we sustain the Examiner's
rejection of claims 4 and 5 as unpatentable over Narita and Isono.
DECISION
We AFFIRM the decision of the Examiner to reject claims 4 and 5 as
unpatentable over Narita and Isono.
No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. § 1.136(a)(l )(iv).
AFFIRMED
4 Should Appellants wish to have the assertions raised in the Reply Brief
addressed by the Examiner, we suggest Appellants file an RCE (Request for
Continued Examination).
4