Ex Parte Demange et al

Patent Trial and Appeal Board

Jun 22, 2018

14381846 (P.T.A.B. Jun. 22, 2018)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE
14/381,846 08/28/2014
60601 7590 06/22/2018
Muncy, Geissler, Olds & Lowe, P.C.
4000 Legato Road
Suite 310
Fairfax, VA 22033
FIRST NAMED INVENTOR
Raynald Demange
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.
4303/0122PUS 1 3563
EXAMINER
POWERS, LAURA C
ART UNIT PAPER NUMBER
1785
MAILDATE DELIVERY MODE
06/22/2018 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
Exparte RAYNALD DEMANGE, PATRICK VEYA,
ALAIN MA YER, and PIERRE DEGOTT
Appeal2017-004978
Application 14/381,846 1
Technology Center 1700
Before JEFFREY T. SMITH, JEFFREY B. ROBERTSON, and
JEFFREY R. SNAY, Administrative Patent Judges.
SMITH, Administrative Patent Judge.
DECISION ON APPEAL
STATEMENT OF THE CASE
This is an appeal under 35 U.S.C. § 134(a) from the final rejection of
claims 1-13 and 21. We have jurisdiction under 35 U.S.C. § 6(b).
The invention relates generally to the protection of security
documents, e.g., banknotes, against illegal actions such as robbery or theft.
1 According to Appellants, the real party in interest is SICP A HOLDING
SA. See App. Br. 2.
Appeal2017-004978
Application 14/3 81,846
(Spec. 1 ). Independent claim 1 is representative of the appealed subject
matter and is reproduced below:
1. A security document comprising:
a substrate;
a protective varnish having a predetermined thickness covering
from about 70% to 90% of a surface area of at least one side of
the substrate; and
an unauthorized access identification area arranged in a
remaining about 10% to about 30% of the surface area of the at
least one side of the substrate, which comprises at least one
staining ink retention zone having either no protective varnish
or a layer of the protective varnish having a thickness less than
the predetermined thickness,
wherein the unauthorized access identification area is
configured so that, in the event of a staining ink coming into
contact with the at least one staining ink retention zone, the at
least one staining ink retention zone permanently and
irreversibly retains the staining ink as an indicator of an
unauthorized access to the security document.
App. Br., Claims App 'x.
Appellants (see generally App. Br.) request review of the following
rejections:
I. Claims 1-3, 5 and 7-12 are rejected under 35 U.S.C.
§ 103(a) over Jung (US 4,804,827, issued Feb. 14, 1989).
II. Claim 4 is rejected under 35 U.S.C. § 103(a) over Jung and
Habik (WO 2004/072378 Al, published Aug. 26, 2004)
(Habik '378).
III. Claim 6 is rejected under 35 U.S.C. § 103(a) over Jung and
Muller et al. (US 2006/0141255 Al, published June 29,
2006).
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Application 14/3 81,846
IV. Claim 13 is rejected under 35 U.S.C. § 103(a) over Jung and
Rosset (US 2004/0023008 Al, published Feb. 5, 2004).
V. Claims 1-3, 7, 12 and 21 are rejected under 35 U.S.C.
§ 103(a) over Habik (WO 02/094577 Al, published Nov.
28, 2002) (Habik '577).
The complete statement of the rejections on appeal appear in
the Final Office Action. (Final Act. 8-12).
OPINION
Prior Art Rejections
Upon consideration of the evidence in this appeal record in light of the
respective positions advanced by the Examiner and Appellants, we
determine that Appellants have not identified reversible error in the
Examiner's Rejections I-IV. We do not sustain Rejection V. Our reasons
follow.
Appellants argue in the Reply Brief that the Examiner did not address
the claims as submitted in the after final submission dated June 28, 2016.
(Reply Br. 2--4). The Examiner acknowledged the amendments to the
claims in the Advisory Action mailed July 21, 2016. The Examiner further
states in the Answer:
[T]he Applicant amended independent claim 1 to further define
the "staining ink retention zone" area of the security document
that has no protective varnish or a thinner protective varnish
layer as being "an unauthorized identification area" that
comprises the at least one staining ink retention zone. This
amendment, however, does not provide any further structure to
this area of the security document and is interpreted as an area
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Application 14/3 81,846
of the security document that has no protective varnish layer or
a thinner protective varnish layer.
(Ans. 2).
Rejection I.
Appellants argue Jung does not teach or provide motivation for
including an "unauthorized access identification area" as recited in
independent claim 1. (App. Br. 8-21 ). Appellants argue the claimed
"unauthorized access identification area" functions as a staining ink
retention zone to provide a visual indication that the document was the
subject of an attempted unauthorized breach however, Jung intentionally left
printing area 5, 6 uncovered to enable electrostatic printing or provide a
signature. (App. Br. 14--15; Reply Br. 2-3).
Appellants' arguments are not persuasive of reversible error.
Appellants are free to recite features of an invention either structurally
or functionally. See In re Swinehart, 439 F.2d 210, 212 (CCPA 1971)
("[T]here is nothing intrinsically wrong with [defining something by what it
does rather than what it is] in drafting patent claims."). Yet, choosing to
define an element functionally, i.e., by what it does, carries with it a risk. As
our predecessor court stated in Swinehart, 439 F.2d at 213, "where the
Patent Office has reason to believe that a functional limitation asserted to be
critical for establishing novelty in the claimed subject matter may, in fact, be
an inherent characteristic of the prior art, it possesses the authority to require
the applicant to prove that the subject matter shown to be in the prior art
does not possess the characteristic relied on." See also In re Hallman, 655
F.2d 212, 215 (CCPA 1981); In re Ludtke, 441F.2d660, 663-64 (CCPA
1971).
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Application 14/3 81,846
The Examiner found Jung teaches an identity card (security
document) having a substrate comprised of paper layers (1, 3), a pigment
layer ( 4) applied to a surface of the paper substrate followed by a protective
varnish layer (7). (Final Act. 3; Fig. 1). The Examiner found the area of the
security document not coated by either the pigment layer or the varnish
layer, i.e., printing area (5, 6), was capable of performing the same function
as the claimed unauthorized access identification area/staining ink retention
zone. (Final Act. 4--5).
We agree with the Examiner that the claimed invention is not
patentably distinct from the teachings of Jung. The Examiner correctly
notes that Jung and the present Specification indicate the same materials -
cellulose or paper containing materials- are suitable for use as the
substrate. (Jung col. 2, 11. 5-8; Spec. i-f 37). Appellants' argument about
Jung's intended function of the uncovered area to receive printing does not
detract from the fact that the materials forming the uncovered area in Jung
are the same as required by the claimed invention. Appellants have not
directed us to evidence that establishes Jung's uncovered printing area was
incapable of functioning as a "staining ink retention zone."
A person of ordinary skill in the art would have sufficient skill to
select the appropriate size for the identification card's printing area.
Appellants have not directed us to evidence that establishes the criticality for
the size of the uncovered area. Where the difference between the claimed
invention and the prior art is some range, the Appellants must show that the
particular range is critical, generally by showing that the claimed range
achieves unexpected results relative to the prior art range. See In re
Woodruff, 919 F.2d 1575, 1577-78 (Fed. Cir. 1990)). Absent a showing of
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criticality for the size of the uncovered portion of the substrate, i.e.
unauthorized access identification area, occupying 10% to about 30% of the
surface area (or 0% to 50% of the surface area for claim 2), Appellants have
not adequately explained that Jung's uncovered (printing) area would not
have been within the claimed range. A person of ordinary skill in the art
would have adjusted, or optimized, the uncovered area of Jung's substrate to
allow for various types of printing. The motivation to modify the uncovered
portion of Jung's substrate does not have to be the same as the claimed
invention. See Alcon Research, Ltd. v Apotex Inc., 687 F.3d 1362, 1368
(Fed. Cir. 2012) ("[M]otivation to modify a prior art reference to arrive at
the claimed invention need not be the same motivation that the patentee
had." (citing KSR Int'! Co. v. Teleflex, Inc., 550 U.S. 398, 420 (2007)
(stating that it is error to look "only to the problem the patentee was trying to
solve"))).
Appellants argue the disclosure of Jung does not suggest the
protective varnish as specified by claims 3 and 5. (Appeal Br. 17).
Appellants' arguments are not persuasive for the reasons set forth by the
Examiner and the Answer. The Examiner has indicated that Jung discloses
radiation curing of acrylic varnish layers. (Ans. 16-17; Jung, cols. 2-3).
Appellants argue the disclosure of Jung does not suggest applying
varnish to both sides of the security document as specified by claim 7.
(Appeal Br. 18). Appellants' arguments are not persuasive for the reasons
set forth by the Examiner and the Answer. The Examiner has indicated that
Jung, column 2 and Figure 2, exhibits that protective furnish is applied to
both sides of the substrate. (Ans. 17).
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Rejection II
The subject matter of claim 4 further defines the invention according
to claim 1 by specifying the protective varnish is a dual cure composition.
Appellants argue Habik '378 only discloses a process and device for
rendering a security paper dirt-repellant and there is no discernible teaching
found in Habik '378 that arguably suggests a security paper including an
unauthorized access identification area as recited by independent claim 1.
(App. Br. 22-23).
Appellants' arguments are not persuasive of reversible error because
they do not address the reasons the Examiner cited Habik '378. The
Examiner cited Habik '378 for describing utilizing dual cure composition
varnish on security documents. Appellants have not disputed that Habik
'3 7 8 describes utilizing dual cure composition varnish on security
documents. The Examiner relied upon Jung for describing a security
document comprising an unauthorized access identification area. Appellants
have not asserted that it would have been unobvious to utilize a dual cure
composition varnish on security document such as described by Jung.
Rejection III
The subject matter of claim 6 further defines the invention according
to claim 1 by specifying the security features of the protective varnish.
Appellants argue Muller is directed to security elements and security
features with color effects that can be produced by physical vapor deposition
or chemical vapor deposition and there is no discernible teaching found in
Muller that arguably suggests a security paper including an unauthorized
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access identification area as recited by independent claim 1. (App. Br. 24--
26).
Appellants' arguments are not persuasive of reversible error because
they do not address the reasons the Examiner cited Muller. The Examiner
cited Muller for describing security features of the protective varnish on
security documents. Appellants have not disputed that Muller describes
security features of the protective varnish on security documents. The
Examiner relied upon Jung for describing a security document comprising
an unauthorized access identification area. Appellants have not asserted that
it would have been unobvious to utilize protective varnish comprising
security features in a security document such as described by Jung.
Rejection IV
The subject matter of claim 13 further defines the invention according
to claim 1 by specifying the additives incorporated into the protective
varnish.
Appellants argue Rosset is directed to a security sheet that is coated
on at least one side with a transparent or translucent coating with a
transparent or translucent binder and there is no discernible teaching found
in Rosset that arguably suggests a security paper including an unauthorized
access identification area as recited by independent claim 1. (App. Br. 26-
28).
Appellants' arguments are not persuasive of reversible error because
they do not address the reasons the Examiner cited Rosset. The Examiner
cited Rosset for describing additives suitable for incorporation into
protective varnish. Appellants have not disputed that Rosset additives
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incorporated into the protective varnish. The Examiner relied upon Jung for
describing a security document comprising an unauthorized access
identification area.
New Rejection
We enter the following new ground of rejection. The Examiner has
failed to provide a rejection of claim 21 over Jung alone or in combination
with other prior art that specifically describes the security document as a
banknote. As set forth above in rejections I and II, Jung describes and
suggests a security document that is patentably indistinct from the security
document of independent claim 1. The subject matter of claim 21 specifies
the security document is a banknote. The prior art cited by the Examiner
establishes that it is known by persons of ordinary skill in the art that
security documents include banknotes. (See e.g., Habik '378).
Consequently, a person of ordinary skill in the art would have recognized the
suitability of forming security documents, including banknotes, which
comprises all the elements described by Jung including the uncovered
portion of the security document.
Rejection V2
The Examiner found Habik '577 teaches a value document (security
document), such as a bank note, comprising a substrate and a protective
layer (protective varnish layer) formed on at least one side to provide stain,
moisture and abrasion resistance, wherein the protective layer is formed
2 We limit our discussion to independent claim 1.
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from a matte varnish that covers less than 100% of the total surface area.
(Final Act. 10; pg. 1, 2). The Examiner found Habik '577 teaches that the
substrate is comprised of paper substrates, plastic materials, composite
materials such as multilayer substrates of paper and plastic, as well as non-
woven layers of cellulose or cotton and synthetic fibers, which are the same
materials utilized by the Appellants. (Final Act. 11 ).
Appellants argue Habik '577 does not teach or provide motivation for
including an "unauthorized access identification area" as recited in
independent claim 1. (App. Br. 28-31 ). Appellants argue Habik '577
merely produces security paper having an interrupted matte lacquer coating
so that the forge protection element is uncoated or covered with a glossy
coating so that forge protection element remains visible/viewable. (App. Br.
31).
We cannot sustain the Examiner's rejection. The Examiner is correct
that Habik '577 discloses a protective matte lacquer layer is provided on at
least one side of the security paper that is omitted in an area where an
applied forgery protection element, such as a holographic structure, is
located. However, Habik '577 discloses the security element that is located
in the uncoated area, is formed from a variety of materials including
metallized-embossed holograms that are applied as a film to the paper or
pigments of cross-linked liquid crystal embedded in resistant polymer layers.
(Habik '577 i-f 7). Habik '577 further discloses the security element already
has a protective and dirt repellent surface. (Habik '577 i-f 7). The Examiner
has not directed us to evidence that establishes that the materials utilized in
forming the security element in Habik '577 are capable of functioning as a
"staining ink retention zone." Consequently, contrary to the Examiner's
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position the security document of Habik '577 does not include an uncovered
area that is capable of functioning as the claimed "unauthorized access
identification area" as required by independent claim 1.
For the foregoing reasons, we cannot sustain the rejection of claims 1,
2, 3, 7, 12, and 21 over Habik '577.
DECISION
For the reasons explained above, we:
Affirm rejections I-IV;
Reverse rejection V; and
We enter a new ground of rejection of claim 21 under
35 U.S.C. § 103(a).
This decision contains a new ground of rejection pursuant to
37 C.F.R. § 41.50(b). Section 41.50(b) provides "[a] new ground of
rejection pursuant to this paragraph shall not be considered final for judicial
review." Section 41.50(b) also provides:
When the Board enters such a non-final decision, the
Appellants, within two months from the date of the decision,
must exercise one of the following two options with respect to
the new ground of rejection to avoid termination of the appeal
as to the rejected claims:
( 1) Reopen prosecution. Submit an appropriate
amendment of the claims so rejected or new evidence relating
to the claims so rejected, or both, and have the matter
reconsidered by the examiner, in which event the prosecution
will be remanded to the examiner. The new ground of rejection
is binding upon the examiner unless an amendment or new
evidence not previously of record is made which, in the opinion
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Application 14/3 81,846
of the examiner, overcomes the new ground of rejection
designated in the decision. Should the examiner reject the
claims, appellant may again appeal to the Board pursuant to this
subpart.
(2) Request rehearing. Request that the proceeding be
reheard under § 41.52 by the Board upon the same record. The
request for rehearing must address any new ground of rejection
and state with particularity the points believed to have been
misapprehended or overlooked in entering the new ground of
rejection and also state all other grounds upon which rehearing
is sought.
Further guidance on responding to a new ground of rejection can be
found in the Manual of Patent Examining Procedure§ 1214.01.
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 ). See 37 C.F.R.
§ 1.136(a)(l )(iv).
AFFIRMED-IN-PART
37 C.F.R. § 41.50(b)
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