Ex Parte Lieberman

Board of Patent Appeals and Interferences

Jun 2, 2009

11198625 (B.P.A.I. Jun. 2, 2009)

UNITED STATES PATENT AND TRADEMARK OFFICE
____________

BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
____________

Ex parte DANIEL LIEBERMAN
____________

Appeal 2009-002574
Application 11/198,625
Technology Center 1700
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Decided:1 June 03, 2009
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Before EDWARD C. KIMLIN, JEFFREY B. ROBERTSON, and
KAREN M. HASTINGS, Administrative Patent Judges.

KIMLIN, Administrative Patent Judge.

DECISION ON APPEAL
This is an appeal from the final rejection of claims 1-44. We have
jurisdiction under 35 U.S.C. § 6(b).

1 The two-month time period for filing an appeal or commencing a civil
action, as recited in 37 C.F.R. § 1.304, begins to run from the Decided Date
shown on this page of the decision. The time period does not run from the
Mail Date (paper delivery) or Notification Date (electronic delivery).
Appeal 2009-002574
Application 11/198,625

Claims 1 is illustrative:
1. An article, comprising:

a substrate;

a printed layer that is applied to the substrate using a
conventional printing system;

a high refractive index surface relief coating that is applied to
the substrate; and

surface relief structures that are printed on the coating using the
conventional printing system at substantially the same speeds and
widths of the printed layer, and in substantially perfect register to the
printed layer.

The Examiner relies upon the following reference in the rejection of
the appealed claims (Ans. 2):
Cox et al. (Cox) 2003/0076555 A1 Apr. 24, 2003

Appellant’s claimed invention is directed to an article comprising a
substrate having coated thereon a printed layer, a high or low refractive
index surface relief coating, and surface relief structures printed on the
surface relief coating.
Appealed claims 1- 44 stand rejected under 35 U.S.C. § 102(b) as
being anticipated by Cox.
Appellant does not present arguments that are reasonably specific to
any particular claim on appeal. Accordingly, all the appealed claims stand
or fall together with claim 1.
We have thoroughly reviewed each of Appellant’s arguments for
patentability. However, we are in complete agreement with the Examiner
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Application 11/198,625

that the cited prior art describes the claimed subject matter within the
meaning of § 102. Accordingly, we will sustain the Examiner’s rejections
for essentially those reasons expressed in the Answer, and we add the
following primarily for emphasis.
We concur with the Examiner that the article depicted in Cox’s Figure
3 represents a description of the claimed article. In particular, Reference
Figure 3 illustrates shrink wrap layer 3, which corresponds to the claimed
substrate, adhesive layer 2, which corresponds to the claimed printed layer,
image intensifying layer 4, which meets the claim requirement for a high
refractive index surface relief coating, and holographic polymer 1, which
corresponds to the surface relief structure.
Appellant maintains that “Cox’s adhesive layer 2 is not a printed layer
applied using a conventional printing system, as recited in independent
claims 1 and 25.” (Br. 3, last para.). However, as pointed out by the
Examiner, Cox exemplifies applying the electron beam curable adhesive
coating with an engraved gravure cylinder (EXAMPLE 1) or a flexographic
printing method (claim 14), which are conventional printing systems. Also,
the Examiner correctly cites the reference’s specific disclosure that “the
electron beam coating is applied selectively in the form of a pattern such as
stripes, ovals or a company logo” ([0036]). Hence, notwithstanding
Appellant’s arguments to the contrary, we, like the Examiner, perceive no
structural distinction between the claimed printed layer and the printed
adhesive layer of Cox, and Appellant has demonstrated no such distinction.
The fact that a layer has adhesive properties does not disqualify it as a
printed layer. In addition, a layer need not comprise a colorant to be a
printed layer, although Cox discloses that “[c]olorants and other
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Appeal 2009-002574
Application 11/198,625

conventional additives may be added where appropriate” ([0025]).
Moreover, we agree with the Examiner that the claim language “using a
conventional printing system” and “using the conventional printing system
at substantially the same speeds and widths of the printed layer” are process
limitations that do not further define the structure of the claimed article.
Appellant also submits that “Cox fails to disclose any form of image
registration, and therefore cannot be said to provide a teaching for image
registration of a hologram with a printed layer” (Br. 4, last para.). However,
as pointed out by the Examiner, EXAMPLE 2 of Cox describes a
holographic image oriented in registration with a striped, printed adhesive
layer. Appellant’s broad claim language does not define the substantially
perfect registration in such a way that distinguishes it over the Example of
Cox. Indeed, claim 1 on appeal encompasses a printed uniform layer
aligned with surface relief structures covering the same area as the printed
layer and, therefore, in registration therewith.
In conclusion, based on the foregoing and the reasons well stated by
the Examiner, the Examiner’s decision rejecting the appealed claims is
affirmed.

No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. § 1.136(a) (2008).

AFFIRMED

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Appeal 2009-002574
Application 11/198,625

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