Ex Parte Snelling et al

Patent Trial and Appeal Board

Apr 23, 2018

12738198 (P.T.A.B. Apr. 23, 2018)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE
121738, 198 04/26/2010
28827 7590 04/25/2018
GABLE & GOTW ALS
100 WEST FIFTH STREET, lOTH FLOOR
TULSA, OK 74103
FIRST NAMED INVENTOR
James Peter Snelling
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.
006422-00053 1196
EXAMINER
LEWIS, JUSTIN V
ART UNIT PAPER NUMBER
3638
NOTIFICATION DATE DELIVERY MODE
04/25/2018 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):
iplaw@gablelaw.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte JAMES PETER SNELLING and
TIMOTHY EDWARD BERRIDGE
Appeal2017-004808
Application 12/738,198
Technology Center 3700
Before STEVEN D.A. McCARTHY, LYNNE H. BROWNE, and
PAUL J. KORNICZKY, Administrative Patent Judges.
BROWNE, Administrative Patent Judge.
DECISION ON APPEAL
STATEMENT OF THE CASE
Appellants appeal under 35 U.S.C. § 134(a) from the rejection of
claims 1-28, 31, and 32. We have jurisdiction under 35 U.S.C. § 6(b ).
We reverse.
CLAIMED SUBJECT MATTER
Claim 1, reproduced below, is illustrative of the claimed subject
matter:
1. A security element comprising:
at least one light transmitting carrier substrate;
Appeal2017-004808
Application 12/738,198
a first metal layer having substantially metal-free areas
defining a first set of indicia having a defined shape which are
visible in transmitted light;
and
a partial first light scattering layer forming a second set of
indicia having a defined shape which are visible in reflected
light, the defined shape of the indicia of the first set being
different from the defined shape of the indicia of the second set,
wherein the first light scattering layer overlaps the substantially
metal free areas in the first metal layer.
REFERENCES
The prior art relied upon by the Examiner in rejecting the claims on
appeal is:
Jones
Kaule
Dames
Heim
Li
us 5, 182,663
us 5,354,099
us 5,639,126
US 2007 /0246933 Al
US 2008/0314284 Al
REJECTIONS
Jan.26, 1993
Oct. 11, 1994
June 17, 1997
Oct. 25, 2007
Dec. 25, 2008
I. Claims 1-3, 5-14, 18-23, 25-28, 31, and 32 stand rejected
under 35 U.S.C. § 103(a) as unpatentable over Kaule and Heim.
II. Claim 4 stands rejected under 35 U.S.C. § 103(a) as
unpatentable over Kaule, Heim, and Dames.
III. Claims 15-17 stand rejected under 35 U.S.C. § 103(a) as
unpatentable over Kaule, Heim, and Li.
IV. Claim 24 stands rejected under 35 U.S.C. § 103(a) as
unpatentable over Kaule, Heim, and Jones.
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Application 12/738,198
DISCUSSION
Rejection I: Obviousness of Claims 1-3, 5-14, 18-23, 25-28, 31, and 32
Based on Kaule and Heim
The Examiner finds that Kaule and Heim disclose or suggest all of the
limitations of claim 1. See Final Act. 3--4. In particular, the Examiner finds
that:
Heim teaches the concept of providing a light scattering (para.
14; authenticating mark 26 can display light scattering effects)
layer (layer 26 forming authenticating mark; abstract; fig. 4)
forming an additional set of indicia (para. 13; authenticating
mark forms patterns, characters or codes) having a defined
shape (shapes of the patterns, characters or codes) which are
visible in reflected light (abstract; para. 13).
Id. at 3. Based on these findings, the Examiner determines that it would
have been obvious
to provide the light-scattering Heim authenticating mark indicia
26 layer spanning across the Kaule metallization 3 and recess 5
portions (as they exist in Kaule fig. 6), positioned in the
assembly as desired, such that said Heim authenticating mark
26 indicia appears against the Kaule transparent plastic film 10
in much the same manner that said authenticating mark 26
indicia appears against the Heim transparent substrate layer 22
(per Heim para. 14 ), in order to yield a resultant security feature
that is more difficult to counterfeit.
Id. at 3--4.
Appellants argue that "[i]f Heim's authenticating mark 26 has a
different shape than that of Kaule' s metal layer 3 and recess 5, the
Examiner's combined structure results in only recess 5 being viewed against
the (still missing) background. Without the separate background and
window, it cannot be viewed." Id. Thus, Appellants contend, "applying
Heim's light scattering layer to Kaule's metal layer [would not result] in
Appellant[ s '] claimed structure." Appeal Br. 7.
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Application 12/738,198
Responding to this argument, the Examiner notes that "Kaule
paragraph 2 provides that the security element is designed to be viewed in
both incident and transmitted light." Ans. 16. Although this statement is
true, it does not address Appellants' arguments pertaining to Heim or
Appellants' contention that the proposed combination would not result in the
claimed invention.
In the Reply Brief, Appellants further explain that "Heim's layer 26 is
a linearly polarizing layer. See e.g. Heim at i-fi-10047-49[.] In order for this
polarizing layer to have any function in Heim, the layer needs to be
combined with Heim's phase-shifting layer 24 or 44. See id.; see also i1
0016." Reply Br. 3. Appellants explain that "[i]f phase-shifting layer 24 or
44 is absent, Heim teaches that the polarizing layer must be 'applied on a
transparent substrate foil 32 having birefringent properties such that a
separate phase-shifting layer [24, 44] can be omitted."' Id. (citing Heim Fig.
3, i150) (emphasis omitted). Appellants also note that "Heim's polarizing
layer 26 is an all-over polarizing layer and is not put down in the form of
indicia." Id. (citing Heim Figs. 2, 4, i148. Based on these explanations and
observations, Appellants conclude that "adding Heim's polarizing layer 26
to Kaule's metal[l]ization 3 and recess 5 results in an all-over polarizer layer
that sits over both the metal and metal-free areas and does not produce
Appellant[s'] required second indicia." Id.
Appellants have the better position. As noted by Appellants, Heim's
security element 20 requires both phase-shifting layer 24 and linearly
polarizing layer 26 viewed against a highly reflective background. See
Heim i148. The Examiner does not explain, nor it is readily apparent, how
Heim's polarizing layer 26 on its own when combined with Kaule's security
element would result in a second indicia as claimed.
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Application 12/738,198
For these reasons, we do not sustain the Examiner's decision rejecting
claim 1 and claims 2, 3, 5-14, 18-23, 25, and 26, which depend therefrom.
Claim 27 incorporates all of the limitations of claim 1 and claims 28, 31, and
32 contain similar limitations. Accordingly, we do not sustain the
Examiner's decision rejecting claims 27, 28, 31, and 32 for the same
reasons.
Re} ections II-IV
Rejections II-IV suffer from the same deficiencies as Rejection I.
Accordingly, we do not sustain the Examiner's decision rejecting claim 4 as
unpatentable over Kaule, Heim, and Dames, rejecting claims 15-17 as
unpatentable over Kaule, Heim, and Li, and rejecting claim 24 as
unpatentable over Kaule, Heim, and Jones.
DECISION
The Examiner's rejections of claims 1-28, 31, and 32 are
REVERSED.
REVERSED
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