Ex Parte CommanderDownload PDFPatent Trial and Appeal BoardJun 29, 201611990563 (P.T.A.B. Jun. 29, 2016) Copy Citation 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. 2 Appeal2013-009554 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. 3 Appeal2013-009554 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. 4 Appeal2013-009554 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 5 Appeal2013-009554 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 6 Appeal2013-009554 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. 7 Appeal2013-009554 Application 11/990,563 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 8 Appeal2013-009554 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 9 Appeal2013-009554 Application 11/990,563 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. 10 Appeal2013-009554 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. 11 Appeal2013-009554 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 12 Appeal2013-009554 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. 13 Appeal2013-009554 Application 11/990,563 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 14 Copy with citationCopy as parenthetical citation