13791181 (P.T.A.B. Jul. 11, 2017)

Ex Parte Droz

Patent Trial and Appeal BoardJul 11, 2017

13791181 (P.T.A.B. Jul. 11, 2017)

UNITED STATES PATENT AND TRADEMARK OFFICE 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 APPLICATION NO. FILING DATE FIRST NAMED INVENTOR ATTORNEY DOCKET NO. CONFIRMATION NO. 13/791,181 03/08/2013 François Droz 911.0051 1668 25534 7590 07/11/2017 CAHN & SAMUELS LLP 1100 17th STREET NW SUITE 401 WASHINGTON, DC 20036 EXAMINER JUNGE, KRISTINA N S ART UNIT PAPER NUMBER 3638 MAIL DATE DELIVERY MODE 07/11/2017 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 FRANCOIS DROZ ____________ Appeal 2016-005135 Application 13/791,1811 Technology Center 3600 ____________ Before KRISTEN L. DROESCH, SCOTT E. BAIN, and STEVEN M. AMUNDSON, Administrative Patent Judges. BAIN, Administrative Patent Judge. DECISION ON APPEAL Appellant appeals under 35 U.S.C. § 134(a) from the Examiner’s Final Rejection of claims 1–3. Claims 4–8 have been cancelled. We have jurisdiction under 35 U.S.C. § 6(b). We REVERSE. 1 Appellant identifies NagraID S.A. as the real party in interest. App. Br. 3. Appeal 2016-005135 Application 13/791,181 2 STATEMENT OF THE CASE The Claimed Invention Appellant’s invention is a “high quality card incorporating a valuable object,” such as a coin or precious metal ingot, in which the valuable object is suspended with gaps on all sides such that it is displayed in “three dimensional shape.” Spec. 2. Claim 1, the lone independent claim, is representative of the invention and the subject matter of the appeal, and reads as follows (with the disputed limitations emphasized): 1. A card forming a support for a valuable object incorporated into the card, the card comprising: (a) the valuable object; (b) a core or body, wherein the core or body has two sides and a through aperture, wherein the valuable object is arranged in the through aperture, and wherein the through aperture has larger dimensions in a main geometric plane of the card than those defined by a contour of the valuable object; (c) at least two transparent films respectively arranged on the two sides of the core or body of the card, wherein the two transparent films respectively cover both sides of the valuable object that are seen through the through aperture, wherein the valuable object is located in a central area of the through aperture so that a transparent peripheral area surrounds the valuable object inside the through aperture and an entire 3D shape of the valuable object is visible, wherein the valuable object is embedded in a transparent resin that completely fills the peripheral area to the valuable object between the object and a contour of the through aperture so that the transparent peripheral area around the valuable object is completely filled by the resin. App. Br. 23 (Claims App.). Appeal 2016-005135 Application 13/791,181 3 The Rejections on Appeal Claims 1–3 stand rejected under pre-AIA 35 U.S.C. § 103(a) as unpatentable over Hiromachi et al. (US 6,006,456; iss. Dec. 28, 1999) (“Hiromachi”) and Yamaguchi (US 5,145,538; iss. Sept. 8, 1992). Final Act. 2–4. ANALYSIS We have reviewed the Examiner’s rejections in light of the arguments raised in the Briefs. On the record before us, we cannot sustain the Examiner’s rejections. Appellant argues the Examiner erred in finding the prior art teaches or suggests a valuable object suspended between two transparent films on a card such that the “3D shape of the valuable object is visible,” as recited in claim 1. App. Br. 6–10 (emphasis added). Specifically, Appellant argues the references cited by the Examiner, Hiromachi and Yamaguchi, only teach or suggest displaying an object in a card in two-dimensional (flat, top-down) view, and the Examiner misconstrues insertion holes in Hiromachi as providing a complete gap in the display allowing three-dimensional view of the object. Id. at 6. We are persuaded by Appellant’s argument. Appeal 2016-005135 Application 13/791,181 4 Appellant’s Figures 1 and 2 illustrate an embodiment of the invention. Figures 1 and 2 are reproduced below. Figure 1 is a “perspective view” of card 2 incorporating metal ingot 6. Spec. 4. As illustrated in Figure 1, area 16 peripheral to metal ingot 6 includes space on all sides such that a three-dimensional view of metal ingot 6 is provided. Figure 2 is a partial cross-section of the card 2, further illustrating peripheral area 16, as well as transparent films 12 and 14 between which metal ingot 16 is suspended. Transparent resin 10 keeps the metal ingot suspended in place. The Examiner finds Hiromachi teaches a “3d shape of the valuable object [a flat, coin-like shape] is clearly visible from the top and bottom of the card.” Ans. 2. The Examiner further finds Hiromachi Figure 2 teaches a Appeal 2016-005135 Application 13/791,181 5 “hole” such that “any space around the object” would be “transparent,” meaning the object would be displayed in three-dimensional view. Ans. 3. Figure 2 of Hiromachi is reproduced below. Figure 2 is a cross-section view of a “novelty card” “wherein a noble- metal piece is integrally fixed to one side of the card body.” Hiromachi col. 1, ll. 38–41, col. 1, ll. 51–52. In Figure 2, “noble-metal piece 12 is fixed to one side of the card body 10.” Id. at col. 2, ll. 13–15. Hiromachi teaches the noble-metal piece “can be fixed . . . by means of adhesion, by forming a through-hole 14 in the card body 10, inserting the piece 12 therein, and placing a cover material 16 on the card body.” Id. at col. 2, ll. 13–18.2 The Examiner finds the through-hole 14 is “necessarily transparent” and “it follows that any space around the object . . . would remain transparent . . . no matter how small” the gap. Ans. 3. As Appellant argues, however, there is no teaching or suggestion in Figure 2, or elsewhere in Hiromachi, that any gap at all remains after insertion of the object, let alone a gap on all sides such that the object is displayed in three dimensional 2 Alternatively, Hiromachi teaches the piece can be inserted by means of a “recess” in the bottom (not sides or front) of the card body. Hiromachi col. 2, ll. 18–19. Appeal 2016-005135 Application 13/791,181 6 view.3 Through-hole 14 in Hiromachi is a hole on one side, for insertion of the object. It is not the same as Appellant’s claimed “peripheral area surround[ing] the valuable object” to allow three-dimensional view. The Examiner responds to Appellant’s argument by noting the claim does not require “all sides of the object are visible.” Ans. 4–5. We agree, but the claim still requires a “transparent peripheral area surrounds the valuable object” and “an entire 3D shape of the valuable object is visible.” As discussed above, we do not find support on the record before us for the finding that Hiromachi teaches or suggests such surrounding peripheral area providing view of the “3D shape” of the suspended valuable object. For the foregoing reasons, we do not sustain the obviousness rejection of independent claim 1, nor its dependent claims 2 and 3. DECISION We REVERSE the Examiner’s rejections of claims 1–3. REVERSED 3 The Examiner relies on Yamaguchi to “teach the idea of an object embedded in a transparent resin,” not for a peripheral area or three- dimensional view. Ans. 5.