10544182 (P.T.A.B. Mar. 20, 2013)

Ex Parte Habik et al

Patent Trial and Appeal BoardMar 20, 2013

10544182 (P.T.A.B. Mar. 20, 2013)

UNITED STATES PATENT AND TRADEMARKOFFICE 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. 10/544,182 10/04/2006 INV001Klaus Habik HABI3001/JJC/PMB 8333 23364 7590 03/20/2013 BACON & THOMAS, PLLC 625 SLATERS LANE FOURTH FLOOR ALEXANDRIA, VA 22314-1176 EXAMINER CORDRAY, DENNIS R ART UNIT PAPER NUMBER 1741 MAIL DATE DELIVERY MODE 03/20/2013 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 KLAUS HABIK, CHRISTOPH MENGEL and JORG LANGER ____________ Appeal 2011-012911 Application 10/544,182 Technology Center 1700 ____________ Before RICHARD E. SCHAFER, JEFFREY T. SMITH, and DEBORAH KATZ, Administrative Patent Judges. SMITH, Administrative Patent Judge. DECISION ON APPEAL Appeal 2011-012911 Application 10/544,182 2 STATEMENT OF THE CASE This is an appeal under 35 U.S.C. § 134 from a rejection of claims 1 through 4, 11 through 15 and 17 through 26. We have jurisdiction under 35 U.S.C. § 6. Appellants’ invention is directed to a security paper for producing documents such as bank notes and passports. App. Br. 6. Claim 1 is illustrative of the subject matter on appeal and is reproduced below: 1. A security paper for producing value documents, exemplified by bank notes, passports or identification documents, comprising a flat substrate provided at least partly with a dirt-repellent protective layer for extending the life time and fitness for circulation, wherein the protective layer comprises at least two lacquer layers, a first lower one of said lacquer layers being formed by a physically drying liquid lacquer layer applied to the substrate which makes contact with the substrate therebelow and closes its pores, and a second upper one of said lacquer layers protecting the substrate from physical and chemical influences; wherein the first lower lacquer layer is based on a water- based dispersion of aliphatic polyester polyurethanes or styrene-acrylic polyurethanes; and the second upper layer is formed as any one of the following layers a), b), or c): a) a radiation-curing UV -crosslinked lacquer layer; b) a physically drying water-based dispersion lacquer layer based on styrene-acrylic without a polyurethane component; c) a hybrid lacquer layer containing both physically drying components and a radiation-curing lacquer component, Appeal 2011-012911 Application 10/544,182 3 and based on aqueous dispersions on the basis of aliphatic urethane acrylates and acrylates with photoinitiators. The Examiner relied on the following references in rejecting the appealed subject matter: Tooth US 4,462,866 July 31, 1984 Kaule US 5,820,971 Oct. 13, 1998 Howland US 5,928,471 July 27, 1999 Süss US 6,059,914 May 9, 2000 Gertzmann US 6,710,120 B2 Mar. 23, 2004 Gerlier US 6,715,750 B1 Apr. 6, 2004 Tullo US 6,905,711 B1 June 14, 2005 Appellants (App. Br. 10), request review of the following rejections from the Examiner’s final office action: I. Claims 1, 3, 4, 11, 13-15, 17, 21, 24 and 26 stand rejected under 35 U.S.C. § 103(a) as being unpatentable over Kaule and Gertzmann. II. Claim 2 stands rejected under 35 U.S.C. § 103(a) as being unpatentable over Kaule, Gertzmann and Howland. III. Claims 12, 19 and 20 stand rejected under 35 U.S.C. § 103(a) as being unpatentable over Kaule, Gertzmann and Gerlier. IV. Claim 18 stands rejected under 35 U.S.C. § 103(a) as being unpatentable over Kaule, Gertzmann and Tullo. V. Claim 25 stands rejected under 35 U.S.C. § 103(a) as being unpatentable over Kaule, Gertzmann and Tooth. VI. Claims 22 and 23 stand rejected under 35 U.S.C. § 103(a) as being unpatentable over Kaule, Gertzmann, Süss and Tooth. Appeal 2011-012911 Application 10/544,182 4 OPINION1 According to Appellants, the claimed invention requires the first lacquer layer to be formed by a physically drying liquid lacquer layer. Claim 1; App. Br. 16. Appellants argue that the combination of Kaule and Gertzmann does not disclose a physically drying first lower lacquer layer as required by the subject matter of independent claim 1. App. Br. 18. The Examiner found that Kaule discloses a security document having first lower and second upper lacquer layers that are radiation (U.V.) or chemically curable. Ans. 3-4. The Examiner also found that Gertzmann discloses a hybrid liquid lacquer layer that first physically dries and then cures chemically or, optionally, by radiation. Id. at 14. The dispositive issue for this appeal is: Does physically drying a lacquer layer exclude drying a hybrid lacquer layer that is first physically dried and subsequently cured? After thorough review of the respective positions provided by Appellants and the Examiner, we answer in the negative and AFFIRM for the reasons presented by the Examiner and add the following for emphasis. Appellants argue that one skilled in the art would recognize that the claimed physical drying of a liquid lacquer layer would not include radiation curing or other chemically curing of the layer. App. Br. 16. That is, Appellants’ claimed first “physically drying” liquid lacquer does not encompass drying hybrid lacquer layers that are first physically dried and 1 We limit our discussion to claim1. We note that Appellants state in their Appeal Brief that all dependent claims stand or fall with independent claim 1. App. Br. 22. Appeal 2011-012911 Application 10/544,182 5 subsequently cured. Id at 16-17. To support this contention, Appellants direct our attention to paragraphs [0011]-[0013] of the Specification as providing guidance to understand that physically drying a liquid lacquer layer does not involve subsequent radiation or chemical curing. Id. at 15. Appellants also direct our attention to the Handbook of Print Media (HELMUT KIPPHAN, HANDBOOK OF PRINT MEDIA 167 (2001); hereinafter Kipphan) in further support of this contention. Id. at 16-17. We are unpersuaded. Contrary to Appellants’ argument, we find no description in the cited portions of the Specification that supports Appellants’ contention that physically drying liquid lacquer excludes hybrid lacquer layers that are first physically dried and subsequently cured. Further, Appellants have proffered no declaration evidence to support the contention that physically drying liquid layers exclude hybrid lacquer layers that first physically dry and then cure. We also find no support for Appellants’ contention in the cited portions of Kipphan. Kipphan is directed to printing inks. Kipphan (p. 166) specifically states “the term ‘drying’ includes all processes taking place after the ink transfer, for instance, from the blanket or printing plate onto the substrate, thereby providing a stable linkage between the substrate and the printing ink.” Appellants have not adequately explained or provided declaration evidence to establish that the subject matter of Kipphan is reasonably pertinent to the subject matter of security documents. Appellants have also not adequately explained how Kipphan’s description of three distinct drying effects for print media is relevant to forming a lacquer layer over a substrate to make a security document. Appeal 2011-012911 Application 10/544,182 6 Thus, Appellants have not adequately explained why one skilled in the art when forming security paper would understand that physically drying liquid layers would exclude hybrid lacquer layers.2 Accordingly, we affirm the rejection of claims 1, 3, 4, 11, 13-15, 17, 21, 24 and 26 under 35 U.S.C. § 103(a) as being unpatentable over Kaule and Gertzmann for the reasons given above and presented by the Examiner. Appellants have not separately argued Rejections II-VI. Instead, Appellants stated that all dependent claims stand or fall with independent claim 1. App. Br. 22. Accordingly, we affirm these rejections as well for the reasons given above and presented by the Examiner. ORDER The rejections of claims 1-4, 11-15 and 17-26 under 35 U.S.C. § 103(a) are affirmed. TIME PERIOD No time period for taking any subsequent action in connection with this appeal may be extended under 37 C.F.R. § 1.136. AFFIRMED bar 2 We note that Appellants have not argued that one skilled in the art would not look to Gertzmann for a lacquer layer for security documents.