Ex Parte Commander

Patent Trial and Appeal Board

Jun 29, 2016

11990563 (P.T.A.B. Jun. 29, 2016)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE FIRST NAMED INVENTOR
111990,563 02/15/2008 Lawrence George Commander
27623 7590 06/30/2016
OHLANDT, GREELEY, RUGGIERO & PERLE, LLP
ONE LANDMARK SQUARE, IOTH FLOOR
STAMFORD, CT 06901
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.
0004588USU/2297 7798
EXAMINER
GRABOWSKI, KYLE ROBERT
ART UNIT PAPER NUMBER
3725
MAILDATE DELIVERY MODE
06/30/2016 PAPER
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.
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte LAWRENCE GEORGE COMMANDER1
Appeal2013-009554
Application 11/990,563
Technology Center 3700
Before LINDA E. HORNER, LYNNE H. BROWNE, and
MARK A. GEIER, Administrative Patent Judges.
GEIER, Administrative Patent Judge.
DECISION ON APPEAL
STATEMENT OF THE CASE
This is a decision on appeal, under 35 U.S.C. § 134(a), from the
Examiner's rejection of claims 95, 97, 101-106, 110, 115-117, 161-169,
and 179-186. Appeal Br. 1. An oral hearing was conducted on March 30,
2016. We have jurisdiction under 35 U.S.C. § 6(b ).
We AFFIRM-IN-PART.
1 According to Appellant, the real party in interest is De La Rue
International Limited. Appeal Br. 1.
Appeal2013-009554
Application 11/990,563
THE CLAIMED SUBJECT MATTER
The claimed subject matter relates "to a security device for security
substrates, such as paper, used for making security documents, such as bank
notes, have anti-counterfeitable features." Spec. 1. Claim 95 is
representative and recites:
95. A security device for a security substrate
comprising a carrier of an at least partially light transmitting
polymeric material, the carrier bearing a plurality of first indicia,
the first indicia being defined by a plurality of smaller second
indicia that are negative, demetallised and are positioned close
enough relative to each other to enable the first indicia to be
visualized as negative indicia, wherein the first indicia have a
height of 0.8mm to 28.0mm and the second indicia have a height
of 0.2mm to 2.0mm and in that the first and the second indicia
are selected from the group consisting of: alphabetic characters,
numeric characters, symbols, pictorial elements, and any
combination thereof.
THE REJECTIONS ON APPEAL
The Examiner rejected claims 95, 97, 101-106, 110, 161-163, 166,
167, 169, and 179-186 as unpatentable under 35 U.S.C. § 103(a) over
Graham (US Dl6,374; iss. Nov. 10, 1885) and Burchard (US 6,030,691; iss.
Feb. 29, 2000).
The Examiner rejected claims 115-117 as unpatentable under 35
U.S.C. § 103(a) over Graham, Burchard, and Isherwood (US 2006/0097512
Al; pub. May 11, 2006).
The Examiner rejected claims 164, 165, and 168 as unpatentable
under 35 U.S.C. § 103(a) over Graham, Burchard, and Isherwood.
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Application 11/990,563
ANALYSIS
The Declarations
With respect to all pending claims, Appellant first argues that the
Examiner "failed to consider the Commander Declaration or the Eastell
Declaration in its determination of obviousness." Appeal Br. 4. Appellant
contends this failure by the Examiner constitutes a failure to make a prima
facie case of obviousness. Id. Appellant further argues that:
The Commander Declaration provided factual evidence
related to the significant problems posed when forming the two
sets of demetallised indicia in Burchard. Specifically, such
processes require the separate demetallisation of both the large
and small characters. In order to achieve correct demetallisation,
the parameters of the demetallisation process are varied for
characters with different stem widths - with the designer left to
choose between optimum conditions for the large characters,
optimum conditions for the small characters, or somewhere in
between.
Reply Br. 4. As to the Eastell Declaration, Appellant contends that:
Id.
The Eastell Declaration provided factual evidence that the
owner of the primary reference to Burchard found the invention
of the present application to be non-obvious. Here, the Eastell
Declaration provided factual evidence related to the activities
Giesecke & Devrient GmbH ("G&D"), the owner by way of
assignment of the primary reference to Burchard. Instead of the
modification proposed by the Office Action to Burchard, G&D
chose [to] take a license to the present application and
commercialize the claimed invention. Thus, the Eastell
Declaration provided factual evidence that G&D itself
recognized the non-obvious solution provided by the claimed
invention.
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Application 11/990,563
The Examiner says little about the declarations. In the Final Office
Action, the Examiner makes no reference to either declaration. In the
Answer, the Examiner states: "The declaration was considered and did not
present any factual evidence that changed the opinion of the 103(a)
rejection." Ans. 8 (emphasis added). The Examiner further explains that the
"evidence was largely drawn to reasons why a large/small design was
implemented" and stating that the fact that the Appellant "has recognized
another advantage which would flow naturally from following the
suggestion of the prior art cannot be the basis for patentability when the
differences would otherwise be obvious." Id. (citing Ex parte Obiaya, 227
USPQ 58, 60 (BPAI 1985)).
The Examiner's reference to the declarations provides some indication
that the Examiner considered the Appellant's declarations. Nonetheless, to
the extent the Examiner did not fully address the reasons for determining
that the declaratory evidence failed to demonstrate non-obviousness of the
claimed subject matter, we consider that error to be harmless in the context
of the arguments Appellant makes regarding the declarations. In particular,
we note that the Commander Declaration's statements regarding the
difficulties in optimizing the visualization of the smaller and larger negative
indicia do not necessarily render the claims, each drawn to an apparatus,
nonobvious. In our view, Appellant has not adequately explained why this
must be so, for example, because one of skill in the art was not capable of
making such an optimization. With respect to the Eastell Declaration,
Appellant has not adequately explained why one company's decision not to
pursue the claimed invention without a license renders the claim nonobvious
to the ordinary skilled artisan.
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Application 11/990,563
In sum, as will be explained in greater detail infra with respect to
Appellant's particular arguments, in our view the Declarations and
Appellant's associated arguments fail to apprise us of Examiner error in
concluding that the claimed subject matter at issue would have been
obvious.
Claims 95, 97, 101-106, 110, 115-117
Appellant argues claims 95, 97, 101-106, and 110, which are subject
to the first ground of rejection, as a group. See Appeal Br. 5-10. We select
claim 95 as representative. See 37 C.F.R. § 41.37(c)(l)(iv) (2012). The
remaining claims in this group stand or fall with claim 95. Appellants also
rely on the arguments presented against the first ground of rejection as the
basis for patentability of claims 115-117, which are subject to the second
ground of rejection. Appeal Br. 5-10. As such, the outcome of the appeal
as to the rejection of claims 115-117 likewise turns on our review of the
Examiner's rejection of claim 95.
Appellant argues that the cited art "fails to disclose or suggest
positioning smaller negative demetallised indicia close enough relative to
one another to enable first indicia to be visualized as negative indicia."
Appeal Br. 5. In our view, Appellant's argument does not apprise us of
Examiner error because the argument fails to take account of the Examiner's
rejection. The Examiner finds that "Graham discloses a design comprising a
plurality of first indicia ( e.g alphabetic character A) being defined by a
plurality of smaller second indicia (e.g. A's) positioned close enough
relative to each other to enable the first indicia to be visualized." Final Act.
2. The Examiner relies upon Burchard for its teaching of forming indicia by
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Application 11/990,563
negative demetallizations. Id. at 3. The Examiner determines that the
combination renders the invention obvious:
It would have been obvious to one of ordinary skill in the art at
the time the invention was made [to] provide the design taught
by Graham via demetallization (e.g. lasering, etching) of the
polymeric material in view of Burchard to form a design for
transmission. The claim would have been obvious because a
particular known technique was recognized as part of the
ordinary capabilities of one skilled in the art, namely providing
any desired design to a security thread in either positive
metallization or negative demetallization, each providing designs
that are viewable in transmission as is well known in the art.
Id. Thus, the Examiner's rejection finds that the combination of Graham
and Burchard suggests positioning smaller negative demetallised indicia
close enough relative to one another to enable first indicia to be visualized
as negative indicia.
Appellant next argues that Graham "is non-analogous art to the
present application and to Burchard such that Graham cannot be relied upon
as a basis for rejection of claim 95." Appeal Br. 6. As noted by Appellants,
to rely on a reference as a basis for rejection, a reference must either be in
the field of Appellant's endeavor or be reasonably pertinent to the particular
problem with which the inventor was concerned. In re Oetiker, 977 F .2d
1443, 1447 (Fed. Cir. 1992).
In our view the Examiner correctly considered Graham as analogous
art because it is reasonably pertinent to the problem faced by the inventor.
Appellants contend that the problem faced by the inventor was "providing
large and small negative indicia in close proximity to one another." Appeal
Br. 6. In our view, this is an overly narrow characterization of the problem
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Application 11/990,563
faced by the inventor. Appellant's claims more broadly relate to developing
indicia for a security device. As the Examiner notes, a font is a potential
design for the indicia and, whether it be positive or negative, is therefore
reasonably pertinent to the development of the indicia for a security device.
Ans. 8-9 (noting that "a design (Graham) is considered applicable to a
design consideration in a demetallising operation"). While we agree that
Graham does not relate to negative indicia, we do not agree with Appellant
that this fact means one of skill in the art would not have looked to
Graham's design. Accordingly, we agree with the Examiner that Graham is
analogous art at least because it is relevant to the problem with which the
inventor was concerned.
Appellant next argues that "Burchard also fails to cure the defect of
how to use larger and smaller demetalized [sic] indicia in the manner
claimed." Appeal Br. 7. This is because, according to Appellant, Burchard
only discloses negative indicia which are disposed in locations remote from
each other. Id. at 7-8. However, in our view, Appellant's argument
disregards the rejection made by the Examiner; namely, that the Examiner
does not rely upon a single reference to show negative demetallized indicia
in close proximity. Rather, the Examiner's rejection relies upon Graham for
the overall design and Burchard for the production of that design using
demetallization. See Final Act. 2--4; Ans. 9 ("Burchard is used to teach the
demetallising process, the actual location of the small/large indicia is
immaterial to the combination."). For that reason, Appellant's argument
does not apprise us of Examiner error.
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In a related argument, Appellant argues that Burchard teaches away
from locating negative indicia in close proximity to each other. Appeal Br.
8. Specifically, Appellant argues that:
Id.
Burchard teaches away from placing large and small negative
indicia "close enough relative to each" in the manner claimed
such that one looking to resolve the problem resolved by the
present application, namely the large and small negative indicia
in close proximity to one another would also not look to
Burchard.
We do not agree that Burchard teaches away from the claimed
invention. Importantly, the applicable law is clear that "[a] reference does
not teach away ... if it merely expresses a general preference for an
alternative invention but does not 'criticize, discredit, or otherwise
discourage' investigation into the invention claimed." DePuy Spine, Inc. v.
Medtronic Sofamor Danek, Inc., 567 F.3d 1314, 1327 (Fed. Cir. 2009)
(quoting In re Fulton, 391F.3d1195, 1201 (Fed. Cir. 2004)). In this case,
while Appellant is correct that Burchard does not disclose positioning the
large and small negative indicia in close proximity, Appellant does not
identify any disclosure in Burchard that one would understand as criticizing
or discouraging such a positioning of negative indicia. See Appeal Br. 8.
Accordingly, we do not determine that Burchard teaches away from the
claimed invention. See DePuy Spine, 567 F.3d at 1327.
Appellant next argues that the "structure of claim 95 eliminates one of
the elements disclosed by Burchard (i.e., the larger negative indicia), while
retaining its function (i.e., the visualization of larger negative indicia) merely
by positioning the second indicia in close proximity to one another." Appeal
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Application 11/990,563
Br. 8-9. According to Appellant, this is indicative of nonboviousness
because "the omission of an element with retention of the element's function
is an indicia ofunobviousness." Id. at 9 (citing In re Edge, 359 F.2d 896
(CCPA 1966)). We determine that the foregoing is not indicative of
nonobviousness in this case, as again the Appellant does not address the full
rejection made by the Examiner. Specifically, the Examiner relies upon the
design of Graham to disclose the positioning of small indicia to visualize a
larger indicia. See Final Act. 2--4. In the context of the Examiner's
rejection, relying upon the combination of Graham with Burchard,
Appellant's argument does not apprise us of Examiner error in concluding
the claims are obvious.
Appellant next argues that the Examiner's combination would render
Burchard unsuitable for its intended purpose. Specifically, Appellant argues
that Burchard "relies upon the separate and remote positioning of the
large and small negative writing relative to one another to provide its
stated benefits and achieve its stated purpose." Appeal Br. 9. Accordingly,
Appellant argues, "modifying Burchard to define its larger character 13
using small characters 12 ... would eliminate Burchard's main
distinguishing characteristic, namely the separate and remote positioning of
the large and small negative writing relative to one another." Appeal Br. 9.
Appellant's argument does not apprise us of Examiner error. In
particular, Appellant again misapprehends the Examiner's rejection. The
Examiner's rejection proposes a modification of Graham using the
demetallising process of Burchard. See Final Act. 2--4. The Examiner does
not propose modifying Burchard in the manner argued by Appellant. We
can find no reason why the Examiner's proposed modification of Graham
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using the demetallisation process of Burchard would require a modification
that renders Burchard unsuitable for its intended purpose.
Appellant also argues that the Eastell Declaration establishes that one
skilled in the art "would never look to modify Graham in view of Burchard
or vise [sic] versa." Appeal Br. 9-10. Appellant contends this is evidenced
by the fact that the owner by assignment of Burchard did not make the
modification proposed by the Examiner, but instead took a license to the
present application. Appeal Br. 10 (referencing the Eastell Declaration).
Appellant's evidence does not apprise us of Examiner error.
Appellant's argument amounts to a position that since one company did not
come up with the purported invention, it cannot be obvious. We are
unaware of any legal principle supporting such a position. Indeed,
Appellant's argument appears to be a rehashing of its nonanalogous art
argument we discussed supra.
Appellant's final argument is:
that the formation of only the second indicia of claim 95, which
allows the demetallisation process to be optimized for these
second indicia, enables a result that would be unexpected from
the proposed combination of Graham and Burchard - namely
second indicia of reduced height combined with first indicia of
increased height.
Appeal Br. 10. Appellant's argument amounts to a bald assertion of
unexpected results without providing a baseline or elaborating on how or
why the result is unexpected. Indeed, we see no basis from Appellant's
argument to determine that the stated result is unexpected and, as such, it
does not apprise us of Examiner error.
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Application 11/990,563
For the foregoing reasons, we sustain the Examiner's rejection of
claims 95, 97, 101-106, 110, and 115-117.
Claims 161, 162, 166, 167, and 169
Appellant argues claims 161, 162, 166, 167, and 169 as a group.
Appeal Br. 11. We select claim 161 as representative. See 3 7 C.F .R.
§ 41.37(c)(l)(iv) (2012). The remaining claims of this group stand or fall
with claim 161. Appellants also rely on the arguments presented against the
first ground of rejection of claim 161 as the basis for patentability of claims
164 and 165, which are subject to the third ground of rejection. Appeal Br.
11. As such, the outcome of the appeal as to the rejection of claims 164 and
165 likewise turns on our review of the Examiner's rejection of claim 161.
Claim 161 recites "[a] security substrate comprising a security device
as claimed in claim 95." Appellant argues that "there is simply no
teach[ing] or suggest[ ion] that the positive font of Graham could find
successful use in a security device ... either alone or in combination with
Burchard." Appeal Br. 11.
Appellant's argument does not apprise us of Examiner error. With
respect to claim 161, the Examiner finds that Burchard teaches "partially
embedding the security device in the substrate such that it is exposed at
window regions 3 (Fig. l)." Final Act. 4; see also id. (noting that Burchard
teaches providing the security device in a banknote). Appellant has not
explained why the foregoing finding by the Examiner is insufficient to teach
or suggest the further limitation of claim 161.
For the foregoing reason and the reasons stated with respect to claim
95 supra, we also sustain the Examiner's rejection of claims 161, 162, 166,
167, and 169.
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Application 11/990,563
Claim 163
Claim 163 depends directly or indirectly from claims 95, 161, and
162. Claim 163 recites that the claimed security substrate further comprises
"windows in at least one surface of the substrate at which are exposed
regions of the security device." Appellant argues the Examiner's proposed
combination fails to "teach or suggest that the positive font of Graham could
find successful use as being exposed from the window of a security device."
Appeal Br. 12.
Appellant's argument does not apprise us of Examiner error. As
noted above, the Examiner finds that Burchard teaches use of a security
substrate "such that it is exposed at window regions 3 (Fig. 1 )." Final Act.
4. Appellant does not explain why this finding does not constitute a
teaching or suggestion of the additional limitation of claim 163.
For the foregoing reason and the reasons stated with respect to claims
9 5 and 161 supra, we also sustain the Examiner's rejection of claim 163.
Claims 164, 165, and 168
Claim 168 depends, directly or indirectly from claims 95, 161, and
167. Claim 168 recites a security article "in which the printing on the
surface of the security substrate comprises indicia which match the first
indicia and/or second indicia on the security element." Appellant argues that
there is "no teaching or suggestion in Graham or Burchard or Isherwood to
provide a security article with matching printing on a substrate to that of the
security device as claimed." Appeal Br. 12.
Appellant's argument is persuasive of Examiner error. The
Examiner's rejection makes findings on this limitation, but refers to
references to "Keller" and "Crane" while the rejection is expressly over
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Application 11/990,563
Graham, Burchard, and Isherwood. Final Act. 5-6; see also id. at 6 ("It
would have been obvious ... to provide the security thread taught in Crane
[] to a banknote in the fashion taught in Keller."). We are not able to discern
a finding from the Examiner relevant to the stated rejection.
The same error identified above also applies to the Examiner's
rejection of claims 164 and 165 which the Examiner made under the same
ground as claim 168. See Final Act. 5-6.
For the foregoing reasons, we do not sustain the Examiner's rejection
of claims 164, 165, and 168.
Claims 179-183
Appellant argues claims 179-183 as a group. Appeal Br. 12-14. We
select independent claim 179 as representative. See 37 C.F.R.
§ 41.37(c)(l)(iv) (2012). The remaining claims of this group stand or fall
with claim 179.
Independent claim 179 recites a security device having, inter alia,
"first indicia and second indicia which is smaller than first indicia, the first
indicia being visualized as negative indicia by the relative close positioning
and registration of the second indicia." Appellant restates the arguments
Appellant made with respect to claim 95 (which contains a substantially
similar limitation). Compare Appeal Br. 5-10 to 12-14.
For the same reasons stated supra with respect to claim 95, we also
sustain the Examiner's rejection of claims 179-183.
Claims 184-186
Appellant argues claims 184-186 as a group. Appeal Br. 14. We
select claim 184 as representative. See 37 C.F.R. § 41.37( c )(1 )(iv) (2012).
The remaining claims of this group stand or fall with claim 184.
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Claim 184 depends from claim 95 and recites "wherein the first
indicia have a height of 2 mm and the second indicia have a height of 0.4
mm." Appellant argues that "the formation of only the second indicia as
claimed enables second indicia of reduced height combined with first indicia
of increased height in the manner recited by claims 184-186 to provide a
result that is unexpected from the proposed combination of Graham and
Burchard." Appeal Br. 14. Appellant's argument is a restating of an
argument made with respect to claim 9 5. See supra 9-10.
For the same reasons stated supra with respect to claim 95, we also
sustain the Examiner's rejection of claims 184-186.
DECISION
We AFFIRM the Examiner's rejections of claims 95, 97, 101-106,
110, 115-117, 161-163, 166, 167, 169, and 179-186 under 35 U.S.C.
§ 103(a).
We REVERSE the Examiner's rejection of claims 164, 165, and 168
under 35 U.S.C. § 103(a).
AFFIRMED-IN-PART
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