Ex Parte Haas et al

Patent Trial and Appeal Board

Jun 20, 2018

13844629 (P.T.A.B. Jun. 20, 2018)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE
13/844,629 03/15/2013
41754 7590
THE JANSSON FIRM
3616 Far West Blvd
Ste 117-314
AUSTIN, TX 78731
06/22/2018
FIRST NAMED INVENTOR
Christopher K. Haas
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.
MMMOOll 6079
EXAMINER
LEWIS, JUSTIN V
ART UNIT PAPER NUMBER
3638
NOTIFICATION DATE DELIVERY MODE
06/22/2018 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 CHRISTOPHER K. HAAS,
TODD D. JONES, and KUI CHEN-H0 1
Appeal2017-009585
Application 13/844,629
Technology Center 3700
Before JAMES P. CAL VE, MICHELLE R. OSINSKI, and
SEAN P. O'HANLON, Administrative Patent Judges.
CAL VE, Administrative Patent Judge.
DECISION ON APPEAL
STATEMENT OF THE CASE
Appellants appeal under 35 U.S.C. § 134(a) from the Final Office
Action rejecting claims 1 and 4--32. Br. 5. We have jurisdiction under
35 U.S.C. § 6(b).
We AFFIRM.
1 3M Innovative Properties Company is identified as the real party in
interest. Br. 3.
Appeal2017-009585
Application 13/844,629
CLAIMED SUBJECT MATTER
Claims 1, 23, 28, and 31 are independent. Claim 1 is reproduced
below.
1. An article comprising:
a transparent flexible hinge comprising a first optical feature;
and
a biodata page comprising a second optical feature, wherein the
flexible hinge is attached to a biodata page surface, wherein the
second optical feature is substantially aligned with the first
optical feature;
wherein the first optical feature and second optical feature
produce an optical effect that is one of a floating image or a
moire magnification when in substantial alignment.
Br. 23 (Claims App'x).
REJECTIONS
Claims 1, 4, 5, 10, 12-17, 19-24, and 27 are rejected under 35 U.S.C.
§ I03(a) as unpatentable over van den Berg (US 2009/0097944 Al, pub.
Apr. 16, 2009), Herlin (US 2009/0212553 Al, pub. Aug. 27, 2009), and
Muke (US 2008/0284157 Al, pub. Nov. 20, 2008).
Claims 6-9, 11, 25, 26, and 28-32 are rejected under 35 U.S.C.
§ I03(a) as unpatentable over van den Berg, Herlin, Muke, and Holmes
(US 2013/0056971 Al, pub. Mar. 7, 2013).
Claim 18 is rejected under 35 U.S.C. § I03(a) as unpatentable over
van den Berg, Herlin, Muke, and Hahn (US 7,967,341 B2, iss. June 28,
2011).
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Appeal2017-009585
Application 13/844,629
ANALYSIS
Claims 1, 4, 5, 10, 12-17, 19-24, and 27
Rejected Over van den Berg, Herlin, and Muke
Appellants argue claims 1, 4, 5, 10, 12-17, and 19-22 as one group,
and claims 23, 24, and 27 as another group. Br. 7-14. We select claims 1
and 23 as representative claims of each group. 37 C.F.R. § 4I.37(c)(l)(iv).
Claims 1, 4, 5, 10, 12-17, and 19-22
The Examiner finds that van den Berg teaches an article such as a
passport including a flexible hinge (hinged part 5), a biodata page (holder
page 2), and first optical feature (surface irregularities in layer 10) that fuses
the flexible hinge and biodata page together to prohibit removal of holder
page 2 without great visible damage occurring. Final Act. 3; Ans. 16. The
Examiner finds that fusing hinged part 5 with biodata page 2 provides a
cooperating, visual, optical feature that indicates if the original biodata page
is removed from the hinge because van den Berg teaches "it is not possible
to remove the hinged part 5 without great damage to the holder page." Final
Act. 3 (citing van den Berg ,r 27); Ans. 17 (same).
The Examiner finds that Herlin teaches a passport security feature of a
transparent hinge (attachment part 2) that cooperates with a unique identifier
5 (perforations reading "12345") formed where hinge 2 and biodata page 3
overlap (Fig. 2) so that unique identifier 5 is visible. Final Act. 3; Ans. 16.
The Examiner determines it would have been obvious to modify van den
Berg to include such a transparent hinge so information printed on a biodata
page of van den Berg's passport in an area that overlaps the hinge is visible
to provide a greater amount of unobscured space to present informational
indicia concerning a passport holder. Final Act. 3; Ans. 16-17.
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Appeal2017-009585
Application 13/844,629
The Examiner finds that Muke teaches cooperating first and second
optical features 22, 18 (Fig. 5) that are substantially aligned to produce an
optical image that creates a floating image effect or a moire magnification
effect ( claim 61 ). Final Act. 4. The Examiner determines it would have
been obvious to modify van den Berg and Herlin, which teach a passport
booklet with biodata information pages and hinges including cooperating
security features thereon, to use the more sophisticated security feature of
Muke (microimage or micro lens grid security feature) on the overlapping
holder page 2 and hinged part 5 of van den Berg's "to yield a resultant
assembly that is more resistant to counterfeiting attempts." Id.; Ans. 3--4.
Appellants argue that van den Berg does not disclose cooperating
security features on information page 2 and hinged part 5, and the portions
relied on by the Examiner refer to the strength of joined hinged part 5 and
holder page 2 rather than a security feature as the Examiner finds. Br. 9-10.
This argument is not persuasive for two reasons. First, the Examiner
relies on Muke, not van den Berg, to teach two cooperating optical features
that are aligned substantially to produce an optical effect such as a floating
image or moire magnification. Final Act. 3--4. Second, the Examiner finds
correctly that van den Berg fuses hinge 5 and biodata holder page 2 together
to prevent removal of holder page 2, which contains a chip and large number
of security features, from hinged part 5 "without great damage to the holder
page." van den Berg ,r,r 18, 27. Claim 1 does not recite any features of the
claimed first or second optical features that distinguish over van den Berg's
fused joint. Nor do Appellants argue any such features. In any case, the
Examiner relies on this teaching of van den Berg as a basis for modifying
van den Berg's hinge area further with teachings ofHerlin and Muke.
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Appeal2017-009585
Application 13/844,629
As modified by teachings of Herlin, van den Berg's hinge area has
two cooperating optical features that indicate whether a biodata page was
removed from a transparent hinge. In this regard, Herlin teaches a passport
having a transparent hinge (attachment part 2), a biodata page (information
part 3) (Fig. 2), and a first optical feature (unique identifier 5) of perforations
formed through the hinge and biodata page in the area where they overlap.
Herlin ,r 18. This visual security feature detects detachment of information
part 3 from attachment part 2 or reattachment of a different information part
3 as the perforations of unique identifier 5 do not match, and the transparent
hinge makes forgery easier to detect. Herlin ,r,r 18-19. The Examiner also
modifies van den Berg further with a second optical feature substantially
aligned with such first optical features, as taught by Muke, to make van den
Berg's passport more resistant to counterfeiting attempts. Final Act. 4.
For these reasons, we are not persuaded by Appellants' arguments that
the Examiner's rationale for modifying van den Berg and Herlin further with
teachings of Muke is deficient. See Br. 11-12. All three references make a
passport more secure and less susceptible to counterfeiting and forgery. van
den Berg's fused hinge makes it visibly evident if a biodata page is removed.
Herlin's unique identifier 5 prevents forgery of a biodata page by linking the
hinge and biodata page with unique optical feature 5 that indicates if the
original biodata page 3 is replaced. Herlin ,r 19; Ans. 16-17. The Examiner
improves this system with a second security feature of Muke. Final Act. 4.
Appellants do not dispute the Examiner's findings that Muke teaches an
improved optical security feature. See Br. 12. Nor do Appellants dispute
Herlin's teaching regarding an anti-forgery optical feature or the Examiner's
modification of van den Berg to include such a feature. See id. at 7-13.
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Appeal2017-009585
Application 13/844,629
Even if we agreed with Appellants that van den Berg does not teach
cooperating security features, which we do not, nonetheless, Herlin teaches
cooperating optical security features on a transparent hinge and a biodata
page of a passport. The Examiner modifies van den Berg with this teaching
based on the teachings of Herlin of the advantages of this optical feature to
improve passport security. Therefore, the Examiner's reason for modifying
van den Berg to include Herlin' s optical features is supported by a rational
underpinning. As modified, van den Berg thus includes cooperating optical
features on a hinge and biodata page. The Examiner's further modification
to include substantially-aligned optical features taught by Muke is supported
by a rational underpinning based on Muke's teachings. Muke ,r,r 1, 26, 78.
Thus, we sustain the rejection of claims 1, 4, 5, 10, 12-17, and 19-22.
Claims 23, 24, and 27
Appellants argue that claim 23 recites a method with similar subject
matter to claim 1 's article including a biodata page with a second optical
feature substantially aligned with the first optical feature when a flexible
hinge is attached to a biodata page, and the Examiner has not rendered this
subject matter obvious at least for the reasons presented for claim 1. Br. 13-
14. Because we sustain the rejection of claim 1, this argument is not
persuasive, and we also sustain the rejection of claims 23, 24, and 27.
Claims 6-9, 11, 25, 26, and 28-32
Rejected Over van den Berg, Herlin, Muke, and Holmes
Claims 28-30
Appellants argue that independent claim 28 is patentable for the same
reasons as claim 1, and Holmes does not cure deficiencies in the Examiner's
rationale to modify van den Berg with Muke's security features. Br. 14--16.
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Appeal2017-009585
Application 13/844,629
Because we determine that the Examiner's reason for modifying van
den Berg with features of Herlin and Muke to render obvious the article of
claim 1 is supported by rational underpinnings as discussed above, there are
no deficiencies for Holmes to cure in this regard. We also determine that the
Examiner's reason for modifying van den Berg further to include the focal
points recited in independent claim 28 based on teachings of Holmes also is
supported by a rational underpinning based on the teachings of Holmes of
the advantages of this feature. Final Act. 13; Ans. 13. Holmes teaches that
the thickness of a transparent layer should be adjusted to ensure that a focal
point of the lenses coincides with printed micro images applied to this layer.
Holmes ,r 162; Final Act. 13 (citing id.).
Thus, we sustain the rejection of claim 28 and its dependent claims 29
and 30, which Appellants do not argue separately. See Br. 16.
Claims 31 and 32
Appellants argue that independent claim 31 recites a method with
similar subject matter to independent claim 28 and, therefore, the Examiner
has failed to establish a prima facie case of obviousness for the same reasons
as claims 1 and 28. Id. at 16-17. Because we sustain the rejection of claims
1 and 28, as discussed above, this argument is not persuasive, and we sustain
the rejection of claim 31 and its dependent claim 32, which Appellants do
not argue separately. See id. at 17.
Claim 9
Appellants argue that the cited portions of van den Berg, Muke, and
Holmes lack a first set of lenses with focal points at images in a biodata page
and a second set of lenses with focal points registered with colored images
on a second hinge surface as recited in claim 9. Id. at 17-19.
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Appeal2017-009585
Application 13/844,629
We agree with the Examiner that van den Berg as modified with the
transparent hinge and unique identification feature 5 of Herlin includes a
first optical feature on a hinge surface and biodata page as discussed above.
Ans. 18. As modified further by teachings of Muke, van den Berg includes
two optical features with micro lenses and colored images, wherein Holmes
teaches to associate the focal point lengths of micro lenses and diffraction
gratings positioned atop such printed indicia and images with the indicia and
images to provide additional, improved security features of the article, where
van den Berg already teaches or calls for the use of additional security
features. Final Act. 9--1 O; Ans. 17-20 ( citing van den Berg ,r 18); Holmes
,r 162 (register focal point with image); Muke ,r 38 (colored images).
Appellants' argument that Holmes and Muke do not teach or suggest
to provide a surface of a transparent flexible hinge with their features (Br.
19) amounts to an individual attack on the references and therefore is not
persuasive of Examiner error. As discussed above, Herlin teaches to place a
unique identification 5 optical feature on a surface of a transparent hinged
area 2 that overlays biodata page 3 of a passport. Muke and Holmes teach to
place their features on surfaces of passport biodata pages as well. Therefore,
the Examiner merely proposes to place the optical features with focal points
of Muke and Holmes at the location taught by Herlin to enhance security of
the passport as all of these references teach. Herlin teaches the advantages
of placing optical features on an overlapped hinge area to prevent forgeries.
Herlin ,r,r 18-19, Fig. 2.
Thus, we sustain the rejection of claim 9.
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Appeal2017-009585
Application 13/844,629
Claims 6-8 and 11
Appellants argue that the Examiner failed to establish a prima facie
case of unpatentability as to claim 1 from which these claims depend, and
Holmes does not overcome the deficiencies of the rejection of claim 1. Br.
20. Because we sustain the rejection of claim 1, this argument is not
persuasive, and we also sustain the rejection of claims 6-8 and 11.
Claims 25 and 26
Appellants argue that the Examiner failed to establish a prima facie
case of unpatentability as to claim 23 from which these claims depend, and
Holmes does not overcome the deficiencies of the rejection of claim 23. Id.
at 20-21. Because we sustain the rejection of claim 23, this argument is not
persuasive, and we also sustain the rejection of claims 25 and 26.
Claim 18
Rejected Over van den Berg, Herlin, Muke, and Hahn
Appellants argue that the Examiner failed to establish a prima facie
case of unpatentability as to claim 1 from which claim 18 depends, and
Hahn does not overcome the deficiencies of the rejection of claim 1. Id. at
21-22. Because we sustain the rejection of claim 1, this argument is not
persuasive, and we also sustain the rejection of claim 18.
DECISION
We affirm the rejections of claims 1 and 4--32.
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
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