Ex Parte Simske et al

Patent Trial and Appeal Board

Sep 16, 2013

11810743 (P.T.A.B. Sep. 16, 2013)

UNITED STATES PATENT AND TRADEMARK OFFICE
__________

BEFORE THE PATENT TRIAL AND APPEAL BOARD
__________

Ex parte STEVEN J. SIMSKE, MALGORZATA M. STURGILL,
JASON S. ARONOFF, JUAN C. VILLA, and GALIA GOLODETZ1
__________

Appeal 2011-006591
Application 11/810,743
Technology Center 2600
__________

Before MELANIE L. McCOLLUM, JEFFREY N. FREDMAN, and
ERICA A. FRANKLIN, Administrative Patent Judges.

McCOLLUM, Administrative Patent Judge.

DECISION ON APPEAL
This is an appeal under 35 U.S.C. § 134 involving claims to a security
printing method. The Examiner has rejected the claims as obvious. We
have jurisdiction under 35 U.S.C. § 6(b). We affirm.
STATEMENT OF THE CASE
Claims 1, 3-5, 7-9, 11-13, and 15-20 are pending and on appeal (App.
Br. 3). The claims subject to each rejection have not been argued separately

1 Appellants identify the real party in interest as Hewlett-Packard
Development Company, L.P. (App. Br. 1.)
Appeal 2011-006591
Application 11/810,743

2
and therefore stand or fall together. 37 C.F.R. § 41.37(c)(1)(vii). Claim 1 is
representative and reads as follows:
1. A method for security printing, said method comprising:
receiving a digital model of a feature for printing, wherein said feature
for printing is configured to be visible by reflecting visible light and wherein
said feature is for authentication by an external device; and
compensating for deviation from said digital model to a printed
instance of said feature, wherein said compensating for deviation comprises:
predicting a glyph gain for at least two physical dimensions of
said digital model, wherein said glyph gain is a function of a printing
device, ink and print media; and
reducing said feature by said predicted glyph gain of said at
least two physical dimensions.
Claims 1, 3-5, 9, 11-13, and 17-20 stand rejected under 35 U.S.C.
§ 103(a) as obvious over Hersch et al. (US 2008/0259400 A1, Oct. 23, 2008)
in view of Herzig (US 5,850,080, Dec. 15, 1998) and Reed et al. (US
2005/0041835 A1, Feb. 24, 2005) (Ans. 3).2
Claims 7 and 15 stand rejected under 35 U.S.C. § 103(a) as obvious
over Hersch in view of Herzig, Reed, and Degott et al. (US 2006/0017957
A1, Jan. 26, 2006) (Ans. 12-13).
Claims 8 and 16 stand rejected under 35 U.S.C. § 103(a) as obvious
over Hersch in view of Herzig, Reed, Degott, and Ligas et al. (US
5,289,547, Feb. 22, 1994) (Ans. 15).
The Examiner relies on Hersch for teaching “a method for security
printing,” noting that “Hersch suggests a method for anti-counterfeiting and
authentication when printing” (id. at 4). The Examiner also finds that

2 The Examiner’s Answer also lists claim 6 as rejected on this basis (Ans. 3).
However, claim 6 has been cancelled (App. Br. 3).
Appeal 2011-006591
Application 11/810,743

3
Hersch teaches “receiving a digital model of a feature for printing...wherein
said feature is for authentication by an external device,” noting that “Hersch
suggests receiving a fluorescent color image that is to be printed and
authenticated using an authentication security device . . . comprising a UV
light source” (id.). In addition, the Examiner finds that Hersch teaches
“compensating for deviation from said digital model to a printed instance of
said feature,” noting that “Hersch suggests adjusting the fluorescent color
images in a way so that quenching effects can be minimized” (id.).
The Examiner relies on Herzig for teaching “wherein said feature for
printing is configured to be visible by reflecting visible light,” noting that
“Herzig suggests determining visual confirmation of a barcode printed
within acceptable tolerances” (id. at 4-5). The Examiner also finds that
Herzig teaches “wherein said compensating for deviation comprises:
predicting a glyph gain for...said digital model, wherein said glyph gain is a
function of a printing device, ink and print media and reducing said feature
by said predicted glyph gain,” noting that “Herzig suggests predicting a
degree of ink-spread based on printing area, ink and printing press, of a
barcode to be printed and reducing the predicted amount in the width of the
lines to be printed to reduce ink-spread” (id. at 5).
The Examiner relies on Reed for teaching “a barcode being a two-
dimensional barcode” (id.).
The Examiner concludes:
It would have been obvious to one having ordinary skill
in the art at the time of applicant's invention to incorporate the
teachings of Reed’s two-dimensional barcode and Herzig’s
prediction of degree of ink-spread/gain such that a reduction
can be made from the widths of the lines with Hersch’s anti-
Appeal 2011-006591
Application 11/810,743

4
counterfeiting and authentication device because all are directed
to forming validity marks on media to prevent errors in
counterfeiting. This would have allowed users of Hersch to not
only minimize quenching effects when printing fluorescent
color images, but also predict and detect whether certain
characteristics of a reproduced barcode fall within specified
tolerances when printing of visible images such as two-
dimensional barcodes. . . .
Thus, it would have been obvious to one having ordinary
skill in the art to apply the techniques of utilizing visible two-
dimensional barcodes when predicting and correcting ink-
spread/gain when printing documents that will be used for
authentication, such that counterfeiting is prevented and
distortion is easy to determine.
(Id. at 5-6.)
ISSUE
With regard to all three grounds of rejection, the only issue raised by
Appellants is: Do Hersch, Herzig, and Reed suggest the method of claim 1?
ANALYSIS
The Examiner finds that “Hersch does not explicitly disclose ‘wherein
said feature for printing is configured to be visible by reflecting visible
light[’]” (Ans. 4). In addition, we agree with Appellants that the Examiner
has not adequately explained why one of ordinary skill in the art would have
modified Hersch’s fluorescent color images, which are visible under UV
light (Hersch, ¶ [0010]), to be visible by reflecting visible light, as taught by
Herzig and Reed (Herzig, Abstract, & Reed, ¶¶ [0110]-[0111]).
Nevertheless, we conclude that the applied references render claim 1
obvious.
Appeal 2011-006591
Application 11/810,743

5
As noted by the Examiner, Reed teaches the use of a two-dimensional
barcode for security printing (Ans. 19 (citing Reed, Abstract & ¶¶ [0004] &
[0111])). In addition, Reed is clearly directed to digital imaging (Reed,
¶¶ [0004]-[0005]).
Herzig discloses “providing a set of test patterns in a master used in
the reproduction of barcodes on a substrate” and that a “‘[m]aster’ . . .
includes not only conventional film-masters, but also electronic masters such
as EPS files, recorded on suitable data storage media, in which the master
barcode is defined by a page description language such as the
‘POSTSCRIPT’TM language” (Herzig, col. 1, l. 67, to col. 2, l. 11). In
addition, Herzig discloses that “it should be understood that the invention
extends to masters stored on . . . media [other than film-masters], such as
magnetic or optical disks, in digital form” (id. at col. 4, ll. 12-17). Herzig
also explicitly discloses that its barcodes are “scannable” (id. at col. 2, l. 36).
We note that the Examiner relies on Hersch for teaching “receiving a
digital model of a feature for printing...wherein said feature is for
authentication by an external device” (Ans. 4). However, for the reasons
discussed above, we conclude that Reed and Herzig also suggest this step.
The Examiner also finds that Hersch teaches “compensating for
deviation from said digital model to a printed instance of said feature” (id.).
However, the Examiner relies on Herzig for disclosing the specific steps for
doing this that are recited in claim 1 (id. at 5). We conclude that it would
have been obvious to form Reed’s visible two-dimensional barcodes by the
method disclosed in Herzig in order to avoid “the relative proportions of the
bar and space width [being] out of tolerance” (Herzig, col. 2, ll. 12-21).
Appeal 2011-006591
Application 11/810,743

6
CONCLUSION
We conclude that Hersch, Herzig, and Reed suggest the method of
claim 1. We therefore affirm the obviousness rejections. However, because
our reasoning differs from that of the Examiner, we designate the affirmance
as a new ground of rejection.
TIME PERIOD FOR RESPONSE
This decision contains a new ground of rejection pursuant to 37
C.F.R. § 41.50(b) (effective September 13, 2004, 69 Fed. Reg. 49960
(August 12, 2004), 1286 Off. Gaz. Pat. Office 21 (September 7, 2004)).
37 C.F.R. § 41.50(b) provides “[a] new ground of rejection pursuant to this
paragraph shall not be considered final for judicial review.”
37 C.F.R. § 41.50(b) also provides that Appellant, WITHIN TWO
MONTHS FROM THE DATE OF THE DECISION, must exercise one of
the following two options with respect to the new ground of rejection to
avoid termination of the appeal as to the rejected claims:
(1) Reopen prosecution. Submit an appropriate
amendment of the claims so rejected or new evidence relating
to the claims so rejected, or both, and have the matter
reconsidered by the Examiner, in which event the proceeding
will be remanded to the Examiner. . . .
(2) Request rehearing. Request that the proceeding be
reheard under § 41.52 by the Board upon the same record. . . .

AFFIRMED, 37 C.F.R. § 41.50(b)

cdc