Ex Parte Szumski et al

Patent Trial and Appeal Board

Oct 23, 2018

14473656 (P.T.A.B. Oct. 23, 2018)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE
14/473,656 08/29/2014
151860 7590 10/25/2018
The Small Patent Law Group, LLC
225 S. Meramec Ave.
Suite 725
St. Louis, MO 63105
FIRST NAMED INVENTOR
Daniel Mark Szumski
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.
62210-US (500-2051US) 1721
EXAMINER
POWERS, LAURA C
ART UNIT PAPER NUMBER
1785
NOTIFICATION DATE DELIVERY MODE
10/25/2018 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):
docket@splglaw.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte DANIEL MARK SZUMSKI, MATTHEW ROBERT SHIELDS,
and WILLIAM A. HERRING
Appeal 2018-000211
Application 14/473,656
Technology Center 1700
Before CATHERINE Q. TIMM, WESLEY B. DERRICK, and
LILAN REN, Administrative Patent Judges.
TIMM, Administrative Patent Judge.
DECISION ON APPEAL 1
1 In explaining our Decision, we cite to the Specification of August 29, 2014
(Spec.), Final Office Action of February 23, 2017 (Final), Appeal Brief of
June 21, 2017 (Appeal Br.), Examiner's Answer of August 14, 2017 (Ans.),
and Reply Brief of October 10, 2017 (Reply Br.).
Appeal 2018-000211
Application 14/473,656
STATEMENT OF THE CASE
Pursuant to 35 U.S.C. § 134(a), Appellant2 appeals from the
Examiner's decision to reject claims 1-18 and 21-25. We have jurisdiction
under 35 U.S.C. § 6(b ).
We AFFIRM-IN-PART.
The claims are directed to a laminated core stock sheet for use in a
composite laminate assembly (see, e.g., claim 1) and a composite laminate
assembly including the laminated core stock sheet (see, e.g., claim 8). The
composite laminate assembly is a feedstock material for making cards, such
as financial transaction cards (e.g., credit or debit cards, phone cards, gift
cards, loyalty cards, etc.), security cards (e.g., identification cards), and the
like. Spec. ,r,r 21, 30; Fig. 4 (showing cards 100 that are to be cut from
composite laminate assembly 400).
Each card, and hence the composite laminate assembly, includes core
stock layers (Fig. 1 at 106, 108), which have the structure required by the
laminate core stock sheet of claim 1. Compare Claim 1, with Spec. ,r 23;
Figs. 1-3. As described in the Specification, one or more of the core stock
layers 106, 108 includes a core substrate layer (Fig. 3 at 300) and an
intermediate filmic layer (Fig. 3 at 302). Spec. ,r 24. As shown in Figure 3,
the intermediate filmic layer (layer 302) itself contains multiple layers and
includes "a supporting film 306 having an emboss coating layer 308 with
plural spaced apart conductive bodies 310 disposed thereon." Spec. ,r 26.
The conductive bodies 310 are arranged in a repeating pattern, such as the
2 Appellant is the applicant, Illinois Tool Works, Inc., which, according to
the Brief, is the real party in interest. Appeal Br. 5.
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Application 14/473,656
spaced hexagonal shaped pattern shown in Figure 5. Spec. ,r 34. The
conductive bodies within the repeating pattern are spaced apart such that
they do not provide an electrical pathway for electrostatic discharge through
the intermediate fihnic layer to the outside of the card. Id. This spacing of
the conductive bodies solves an electrostatic discharge problem that had
been present in the prior art cards. Spec. ,r 4.
Claim 1, with reference numerals from the figures, is further
illustrative:
1. A laminated core stock sheet [Fig. 2: 106, 108J for use
in a composite laminate assembly [Fig. 4: 400J that is
sufficiently large along two or more dimensions for being
separated into plural individual cards [Fig. 4: 1 OOJ, the
laminated core stock sheet comprising:
a core substrate layer [Fig. 3: 300J; and
an intermediate filmic layer [Fig. 3: 302J coupled to the
core substrate layer [300J, the intermediate filmic layer [302J
including plural conductive bodies [Fig. 3: 31 OJ arranged in a
repeating pattern and that provide at least one of a security
feature, a decorative feature, or other functional feature of the
individual cards [ 1 OOJ, wherein the plural conductive bodies
[31 OJ are spaced apart from each other within the intermediate
filmic layer [302J such that the plural conductive bodies [302J
prevent conduction of electrostatic discharge through the
intermediate filmic layer [302J and outside of the individual
cards [ 100].
Appeal Br. 42 ( claims appendix).
The Examiner maintains the following rejections, which Appellant
appeals:
A. Claims 1-18 under 35 U.S.C. § 112(a) as lacking written
descriptive support;
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Application 14/473,656
B. Claims 1-18, 21, and 22 under 35 U.S.C. § 112(a) as lacking
enab lement;
C. Claims 1-18, 21-23, and 25 under 35 U.S.C. § 112(b) as
indefinite;
D. Claims 1-13, 21, 22, and 24 under 35 U.S.C. § 103 as
obvious over Mosteller3;
E. Claims 1-13, 21, and 22 under 35 U.S.C. § I02(a)(l) as
anticipated by Mosteller;
F. Claims 14--18 under 35 U.S.C. § 103 as obvious over
Mosteller in view of Whitney4; and
G. Claims 23 and 25 under 35 U.S.C. § 103 as obvious over
Mosteller in view of Solmsdorf. 5
OPINI0N6
Indefiniteness
We begin by analyzing the definiteness of the claims. It is necessary
to begin with the question of definiteness because the scope of the claims
must be understood before it can be determined whether the subject matter
3 Mosteller, US 2008/0245865 Al, published October 9, 2008.
4 Whitney, US 2007/0211398 Al, published September 13, 2007.
5 Solmsdorf, US 6,082,778, issued July 4, 2000.
6 For some rejections it is unclear why the Examiner rejected some
dependent claims, but not others or why the Examiner based a rejection on
anticipation, but included an obviousness analysis. We limit our review to
the rejections before us and the issues arising from the arguments of
Appellant.
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Application 14/473,656
of the claims is described, enabled, novel and non-obvious. In re Moore,
439 F.2d 1232, 1235 (CCPA 1971).
Id.
As stated in Moore:
This first inquiry therefore is merely to determine
whether the claims do, in fact, set out and circumscribe a
particular area with a reasonable degree of precision and
particularity. It is here where the definiteness of the language
employed must be analyzed- not in a vacuum, but always in
light of the teachings of the prior art and of the particular
application disclosure as it would be interpreted by one
possessing the ordinary level of skill in the pertinent art.
Sufficiently large
The first issue is: Has Appellant identified a reversible error in the
Examiner's determination that "sufficiently large" in the phrases "'for use in
a composite assembly that is sufficiently large along two or more
dimensions"' in claim 1 and "'a composite assembly that is sufficiently large
for being separated into plural individual cards"' in claim 8 is indefinite.
Compare Final 8, and Ans. 30, with Appeal Br. 24--26.
Appellant has not identified such an error.
The "sufficiently large" dimensional limitation of claims 1 and 8
depends on the size of "individual cards." The problem is that the minimum
possible dimension of such cards is unknown. Appellant contends that the
Specification describes the size of individual cards, citing paragraph 21 of
the Specification. Appeal Br. 24. But this paragraph merely discloses a card
100 of a specific embodiment of the invention that may be used in a variety
of applications, such as a financial transaction card, a security card, or the
like. Spec. ,r 21. Appellant contends that the sizes of these types of cards
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are well known and cites to the international standards disclosed in ISO/IEC
7 810 Identification Cards - Physical Characteristics as evidence of the size
of these cards. Appeal Br. 25. The problem is that claims 1 and 8 are not
limited to financial transaction cards or security cards, but are open to any
type of card and could encompass, for instance, small loyalty cards designed
to fit onto key chains, business cards, or any other card of any size.
According to Dictionary.com, a card is "a usually rectangular piece of stiff
paper, thin pasteboard, or plastic for various uses, as to write information on
or printed as a means of identifying the holder: a 3 11 x 5 11 file card; a
membership card." Card, Dictionary.com (visited Oct. 18, 2018). How big
a sheet of material must be to constitute a card is unknown. And, thus, just
how large the composite laminate assembly must be to be "sufficiently
large" to meet the requirements of claims 1 and 8 is unclear.
We, thus, sustain the Examiner's rejection of claims 1-18, 21-23, and
25 under 35 U.S.C. § 112(b) as indefinite.
Intermediate filmic layer
Although the evidence supports the Examiner's determination of
indefiniteness as to the "sufficiently large" language of claims 1 and 8, we
agree with Appellant that the Examiner has failed to establish that the
language within the clause limiting the intermediate filmic layer is
indefinite.
The Examiner determines that "[i]t is unclear if the intermediate
filmic layer is only comprised of the plural conductive bodies, or if there is
an additional film layer (i.e. filmic) present." Final 9. This determination is
based on the fact that the Specification describes the intermediate filmic
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Application 14/473,656
layer 3 02 as a multilayer structure, but the claims only state that the
intermediate filmic layer includes conductive bodies. Final 8-9; Ans. 30.
The Examiner is correct that the Specification describes the
intermediate filmic layer 302 as including a supporting film 306 and emboss
coating layer 308 and that these layers are not claimed. Ans. 30. But this
fact does not make the claim indefinite, only broad. "[B]readth is not
indefiniteness." In re Gardner, 427 F.2d 786, 788 (CCPA 1970).
Claims 1 and 8 require an intermediate filmic layer including plural
conductive bodies. Viewing this language in a manner consistent with the
Specification, which discloses that "[t]he filmic layer 302 includes a
supporting film 306 having an emboss coating layer 308 with plural spaced
apart conductive bodies 310 disposed thereon," Spec. ,r 26, the ordinary
artisan would understand this language to require a filmic layer of filmic
composition, such as a composition of embossable coating material and
conductive bodies.
As to the Examiner's rejection of language in dependent claims 2, 7,
and 9, we agree with Appellant that each of these rejections is based on the
flawed interpretation of the intermediate filmic layer as only comprised of
the plural conductive bodies. Compare Final 9-10, with Appeal Br. 28. The
intermediate filmic layer includes the conductive bodies, but also includes
filmic materials, such as the material of the supporting film and emboss
coating layer disclosed in the Specification.
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Spacing of conductive bodies
The Examiner also faults the language in claims 1 and 8 limiting the
spacing of the plural conductive bodies. Final 10-11. The language of
claim 1 is illustrative:
wherein the plural conductive bodies are spaced apart from
each other within the intermediate filmic layer such that the
plural conductive bodies prevent conduction of electrostatic
discharge through the intermediate filmic layer and outside of
the individual cards.
Appeal Br. 42 (claims appendix). The issue here is whether those of
ordinary skill in the art would be reasonably apprised of the spacing distance
encompassed by the claims. The Examiner has not provided the necessary
analysis to support a determination that the ordinary artisan would not
understand the scope of the spacing distances or that the ordinary artisan
could not determine these distances. As stated by Appellant, the spacing
must be such that "current is not conducted through the layer that
includes the bodies," and "[t]his claim language informs persons of ordinary
skill in the art that the conductive bodies cannot touch each other or be so
close to each other to allow conduction of electrostatic discharge." Appeal
Br. 29.
Claims 2 3 and 2 5
Claim 23 requires the intermediate filmic layer also include an emboss
coating layer having the plural conductive bodies coupled with the emboss
coating layer. Claim 25 includes a similar limitation.
According to the Examiner, "emboss coating layer" and, additionally,
"'plural conductive bodies coupled with the emboss layer"' are unclear.
Final 11.
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As to the "emboss coating layer" language, we agree with Appellant
that this language is clear when read in light of the Specification. Appeal
Br. 31-32. The Specification discloses that "[t]he layer 308 may be an
embossable layer capable of being deformed by one or more male and/or
female roller dies to create a raised ( or lowered) design ( or relief)." Spec.
,r 28. Thus, the "emboss coating layer" is a layer capable of being embossed
in the manner discussed in the Specification.
As to the coupling of the conductive bodies, we agree with Appellant
that this language means that the conductive bodies are connected with the
emboss coating layer. Appeal Br. 31. See Dictionary.com ( defining
"couple" when used as a verb with an object as
"to fasten, link, or associate together in a pair or pairs" or
"to join; connect.").
The only basis for rejection under 35 U.S.C. § 112(b) we sustain is the
rejection based on the language "sufficiently large."
Written Descriptive Support
The Examiner rejects claims 1-18 under 35 U.S.C. § 112(a) as lacking
written descriptive support on the basis that "sufficiently large" is new
matter.
We agree with Appellant that the Examiner reversibly erred. Appeal
Br. 13. The Specification reasonably conveys that Appellant had possession
of forming a composite laminate assembly sufficiently large enough to be
separated into plural individual cards. Figure 4 depicts a composite laminate
assembly 400 from which plural cards 100 may be formed. Spec. ,r 30.
Paragraph 62 discloses a step of cutting cards from the composite laminate
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assembly. Spec. ,r 62; Fig. 11. Thus, the Specification reasonably conveys
to the ordinary artisan that Appellant had possession of a composite laminate
assembly with the "sufficiently large" dimensions required by the claims.
We do not sustain the rejection of claims 1-18 under 35 U.S.C.
§ 112(a) as lacking written descriptive support.
Enablement
The Examiner rejects claims 1-18, 21, and 22 under 35 U.S.C.
§ 112(a) as lacking enablement for spacing the plural conductive bodies a
distance that prevents conduction of electrostatic discharge, but allows
electromagnetic waves to pass through. Final 3-7. The Examiner discusses
several Wands factors including the breath of the claims, the nature of the
invention, and the guidance of the Specification. See In re Wands, 858 F.2d
731,737 (Fed. Cir. 1988) (discussing the following factors (1) the quantity
of experimentation necessary, (2) the amount of direction or guidance
presented, (3) the presence or absence of working examples, (4) the nature
of the invention, (5) the state of the prior art, (6) the relative skill of those in
the art, (7) the predictability or unpredictability of the art, and (8) the breadth
of the claims.). However, the Examiner's analysis does not indicate that the
factors were properly weighed: The analysis does not convey why these
factors support a finding that undue experimentation would have been
required to determine the spacing.
The Specification discloses that spacing of the conductive bodies
results in the lack of a conductive pathway and it is this lack of a conductive
pathway that allows the card to avoid electrostatic discharge. Spec. ,r,r 24,
26, 34, 38. The Specification further discloses spacing the conductive
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bodies apart so the fihnic layer has a low optical density, which permits a
relatively large range of frequencies of electromagnetic waves to pass
through the filmic layer to and from an RFID reader to an antenna. Spec.
,r 53. The Examiner does not provide any evidence to refute these
assertions, nor does the Examiner cite to any convincing evidence or provide
technical reasoning indicating that undue experimentation would have been
required to determine the spacing that would achieve both results.
Obviousness and Anticipation
The Examiner rejects claims 1-13, 21, 22, and 24 under 35 U.S.C.
§ 103 as obvious over Mosteller, claims 1-13, 21, and 22 under 35 U.S.C.
§ 102(a)(l) as anticipated by Mosteller, claims 14--18 under 35 U.S.C. § 103
as obvious over Mosteller in view of Whitney, and claims 23 and 25 under
35 U.S.C. § 103 as obvious over Mosteller in view of Solmsdorf.
All of these rejections are in error for the same reason: The Examiner
has failed to establish that Mosteller teaches or suggests forming an
intermediate filmic layer having plural conductive bodies arranged in a
repeating pattern with the plural conductive bodies spaced apart from each
other such that the plural conductive bodies prevent conduction of
electrostatic discharge through the intermediate filmic layer and outside of
the individual cards.
The Examiner finds that Mosteller's effect generating material 38
bodies are plural conductive bodies as required by claims 1 and 8. Final 13,
19.
Mosteller teaches a multi-layered card with a bearing layer 12 that
includes an effects layer 30. Mosteller ,r 32. Effects layer 30 includes a
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substrate 36 having an effects-generating material 38 deposited thereover.
Mosteller ,r 34. The effects-generating material 38 may be patterned to form
one or more holographic images. Mosteller ,r 35. Figure 2B shows an
example with two such holographic images formed from metal or metal
alloy 38. Id.
Although, as acknowledged by the Examiner, Mosteller does not
expressly recite that the holographic conductive bodies 3 8 are arranged in a
repeating pattern, the Examiner concludes it would have been obvious "to
modify the metal layer to be in any desired arrangement by the user,
including a repeating pattern, based upon the aesthetic or functional features
desired in the resultant card." Final 14, 20. Regarding spacing the plural
conductive bodies to prevent conduction of electrostatic discharge, the
Examiner finds the limitation is a functional limitation, that this functional
limitation is met because Mosteller teaches the same materials and
arrangements used for the layers as the instant application, and that the
multilayer laminate assembly taught by Mosteller would be capable of
having the required function. Final 14--15, 20-21.
We agree with Appellant that the Examiner's rejection is not factually
supported and is based on improper hindsight reasoning. Appeal Br. 34--36.
Mosteller offers no suggestion of placing the holograms in a repeating
pattern with spacing such that conduction of electrostatic discharge through
the intermediate filmic layer and outside of the individual cards is prevented
as required by claims 1 and 8.
We do not sustain the rejection of claims 1-13, 21, 22, and 24 under
35 U.S.C. § 103 as obvious over Mosteller, claims 1-13, 21, and 22 under
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35 U.S.C. § 102(a)(l) as anticipated by Mosteller, claims 14--18 under
35 U.S.C. § 103 as obvious over Mosteller in view of Whitney, and claims
23 and 25 under 35 U.S.C. § 103 as obvious over Mosteller in view of
Solmsdorf.
CONCLUSION
In summary:
A. We do not sustain the rejection of claims 1-18 under
35 U.S.C. § 112(a) as lacking written descriptive support;
B. We do not sustain the rejection of claims 1-18, 21, and 22
under 35 U.S.C. § 112(a) as lacking enablement;
C. We sustain the rejection of claims 1-18, 21-23, and 25
under 35 U.S.C. § 112(b) as indefinite;
D. We do not sustain the rejection of claims 1-13, 21, 22, and
24 under 35 U.S.C. § 103 as obvious over Mosteller;
E. We do not sustain the rejection of claims 1-13, 21, and 22
under 35 U.S.C. § 102(a)(l) as anticipated by Mosteller;
F. We do not sustain the rejection of claims 14--18 under
35 U.S.C. § 103 as obvious over Mosteller in view of
Whitney; and
G. We do not sustain the rejection of claims 23 and 25 under
35 U.S.C. § 103 as obvious over Mosteller in view of
Solmsdorf.
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DECISION
The Examiner's decision is affirmed-in-part.
TIME PERIOD FOR RESPONSE
No time period for taking any subsequent action in connection with
this appeal maybe extended under 37 C.F.R. § 1.136(a)(l).
AFFIRMED-IN-PART
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