11645910 (P.T.A.B. Sep. 25, 2013)

Ex Parte Reichelsheimer et al

Patent Trial and Appeal BoardSep 25, 2013

11645910 (P.T.A.B. Sep. 25, 2013)

UNITED STATES PATENT AND TRADEMARK OFFICE ____________________ BEFORE THE PATENT TRIAL AND APPEAL BOARD ____________________ Ex parte JAY REICHELSHEIMER and LUIS A. SANCHEZ ____________________ Appeal 2011-012262 Application 11/645,910 Technology Center 3700 ____________________ Before: JOHN C. KERINS, SCOTT A. DANIELS, and NEIL T. POWELL, Administrative Patent Judges. POWELL, Administrative Patent Judge. DECISION ON APPEAL Appeal 2011-012262 Application 11/645,910 2 STATEMENT OF CASE Appellants appeal under 35 U.S.C. § 134 from a rejection of claims 1- 7 and 10-21. We have jurisdiction under 35 U.S.C. § 6(b). We AFFIRM. THE CLAIMED SUBJECT MATTER Independent claim 1, reproduced below, is illustrative of the appealed subject matter. 1. A printed indicium comprising: a first section comprising a first ink having a first color under normal daylight; and a second section comprising a second different ink, wherein the second different ink comprises a photochromic or thermochromic ink which is not visible under normal daylight, the second section further comprising an input field marked using a third different ink which comprises a photochromic or thermochromic ink which is visible under normal daylight. REFERENCES The prior art relied upon by the Examiner in rejecting the claims on appeal is: Singer US 5,636,874 June 10, 1997 Hechinger US 6,029,883 Feb. 29, 2000 Greene US 6,315,329 B1 Nov. 13, 2001 Appeal 2011-012262 Application 11/645,910 3 REJECTIONS Appellants seek our review of the following rejections. I. Claims 1-7, 10, 11, and 15-21 stand rejected under 35 U.S.C. § 103(a) as unpatentable over Greene and Singer. II. Claims 12-14 stand rejected under 35 U.S.C. § 103(a) as unpatentable over Greene, Singer, and Hechinger. ANALYSIS Rejection I – Independent Claims 1, 10, 15, and 17 Appellants argue claims 1, 10, 15, and 17 as a group. See App. Br. 14-20. We select claim 1 as representative. Claims 10, 15, and 17 stand or fall with claim 1. See 37 C.F.R. § 41.37(c)(1)(vii). The Examiner finds that Greene discloses printed indicium meeting most of the limitations of claim 1, including the claimed “first ink” and “second different ink.” Ans. 3-4. The Examiner finds that Greene does not disclose the second section of the printed indicium having the “third different ink which comprises a photochromic or thermochromic ink which is visible under normal daylight,” as recited in claim 1. Id. at 4. The Examiner finds that Singer discloses a document similar to Greene’s, and that Singer’s document has a background printed with thermochromic ink that is visible under normal daylight but turns transparent when heated. Id. The Examiner concludes that it would have been obvious to print this ink disclosed by Singer on at least one area of Greene’s printed indicium in order to provide an additional security measure. Id. at 4-5. The Examiner reasons that both Greene and Singer disclose checks with security features, and that combining the security features of the two references into the same Appeal 2011-012262 Application 11/645,910 4 check would provide the added security of two different verification methods. Id. at 11. Appellants argue that Greene teaches away from using visible ink, as recited in claim 1, because Greene discloses that “UV inks . . . in the Green system are invisible to the naked eye.” Greene, col. 3, ll. 38-39; App. Br. 18. In response, the Examiner correctly notes that this disclosure does not suggest that every ink used for security measures must be invisible to the naked eye, it only conveys that UV inks used by Greene are invisible to the naked eye. Ans. 10-11. We do not understand the cited portion of Greene as criticizing, discrediting, or otherwise discouraging using a thermochromic ink that is visible under normal daylight. Accordingly, Appellants do not convince us that Greene teaches away from the claimed invention. See In re Fulton, 391 F.3d 1195, 1201 (Fed. Cir. 2004). Appellants also argue that “there is no motivation for one of ordinary skill in the applicable art to consult either reference to solve the problem addressed by the present invention,” as “[n]either reference teaches or suggests a method to protect/secure information which is subsequently added to a document/check, e.g., after the fabrication of the stock of pre- printed documents/checks.” App. Br. 18-19. This argument does not apprise us of error for two reasons. First, the argument is not commensurate in scope with claim 1, which says nothing about protecting/securing information added to a document after fabrication. Second, contrary to the thrust of Appellants’ argument, the Examiner’s obviousness analysis need not look only to the problem Appellants endeavored to solve. As the Supreme Court has noted, “[u]nder the correct analysis, any need or problem known in the field and addressed Appeal 2011-012262 Application 11/645,910 5 by the patent can provide a reason for combining the elements in the manner claimed.” KSR Int’l Co. v. Teleflex Inc., 550 U.S. 398, 420 (2007). By noting that Singer discloses using a thermochromic ink that is visible in normal daylight to meet a need of providing increased security for a check, the Examiner provides rational underpinning for the determination that it would have been obvious to add this ink to Greene’s check for increased security. See Ans. 4-5, 11. That Appellants may have had a different reason for conceiving the claimed invention does not negate the existence of a reason to combine the disclosures of Greene and Singer. And Appellants do not present any arguments convincing us of error in the Examiner’s determination that a check resulting from the proposed combination would meet the limitations of claim 1. For the foregoing reasons, we sustain the rejection of claim 1. Independent claims 10, 15, and 17 fall with claim 1. Rejection I – Dependent Claims 2-7, 11, 16, and 18-21 Regarding dependent claims 2-7, 11, 16, and 18-21, Appellants argue only that these claims are allowable because of the deficiencies in the rejection of independent claims 1, 10, 15, and 17. This argument does not apprise us of error because, as explained above, Appellants’ arguments do not apprise us of error in the rejection of independent claims 1, 10, 15, and 17. Appeal 2011-012262 Application 11/645,910 6 Rejection II Appellants argue claims 12-14 as a group. See App. Br. 21. We select independent claim 12 as representative. Claims 13 and 14 stand or fall with claim 12. Appellants traverse the rejection of claim 12 by arguing that the cited portions of Hechinger disclose an envelope with a chemically treated window but do not disclose or suggest the claimed “opaque window comprising a photochromic or thermochromic material.” App. Br. 21. This argument does not apprise us of error in the rejection because the Examiner does not rely on Hechinger as disclosing a photochromic or thermochromic material. Instead, the Examiner determines that it would have been obvious in view of Singer to modify Hechinger’s window with a thermochromic material. Ans. 9-10. Aside from the foregoing argument, Appellants traverse the rejection of claim 12 only by referring to the arguments presented in connection with claim 1. App. Br. 21. For the reasons discussed above, these arguments do not apprise us of error in the rejection. DECISION We affirm the Examiner’s decision rejecting claims 1-7 and 10-21. No time period for taking any subsequent action in connection with this appeal may be extended under 37 C.F.R. § 1.136(a)(1)(iv). AFFIRMED mls