2019005158 (P.T.A.B. Jul. 27, 2020)

SICPA HOLDING SA

Patent Trials and Appeals BoardJul 27, 2020

2019005158 (P.T.A.B. Jul. 27, 2020)

UNITED STATES PATENT AND TRADEMARK OFFICE 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 APPLICATION NO. FILING DATE FIRST NAMED INVENTOR ATTORNEY DOCKET NO. CONFIRMATION NO. 15/103,565 06/10/2016 Mathieu SCHMID 4303/0140PUS1 5248 60601 7590 07/27/2020 Muncy, Geissler, Olds & Lowe, P.C. 4000 Legato Road Suite 310 Fairfax, VA 22033 EXAMINER TADAYYON ESLAMI, TABASSOM ART UNIT PAPER NUMBER 1712 NOTIFICATION DATE DELIVERY MODE 07/27/2020 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): MAILROOM@MG-IP.COM PTOL-90A (Rev. 04/07) UNITED STATES PATENT AND TRADEMARK OFFICE BEFORE THE PATENT TRIAL AND APPEAL BOARD Ex parte MATHIEU SCHMID, CLAUDE-ALAIN DESPLAND, EVGENY LOGINOV, CEDRIC AMERASINGHE, and PIERRE DEGOTT Appeal 2019-005158 Application 15/103,565 Technology Center 1700 Before JAMES C. HOUSEL, BRIAN D. RANGE, and MERRELL C. CASHION, JR., Administrative Patent Judges. HOUSEL, Administrative Patent Judge. DECISION ON APPEAL STATEMENT OF THE CASE Pursuant to 35 U.S.C. § 134(a), Appellant1 appeals from the Examiner’s decision to reject claims 1–13 and 16–18 under 35 U.S.C. § 103 over Raksha (US 2006/0081151 A1, pub. Apr. 20, 2006) in view of Phillips (US 2002/0182383 A1, pub. Dec. 5, 2002). We have jurisdiction under 35 U.S.C. § 6(b). 1 We use the word Appellant to refer to “applicant” as defined in 37 C.F.R. § 1.42(a). Appellant identifies the real party in interest as SICPA HOLDING SA. Appeal Brief (“Appeal Br.”) filed January 18, 2019, 2. Appeal 2019-005158 Application 15/103,565 2 We REVERSE.2 CLAIMED SUBJECT MATTER The invention relates to processes for producing optical effect layers (“OELs”) from a coating composition comprising magnetically oriented platelet-shaped magnetic or magnetisable pigment particles in a binder material. Spec. ¶ 1. Such OELs may serve as anti-counterfeit measures on security documents or security articles or for decorative purposes. Id. Appellant discloses that platelet-shaped pigment particles (or oblate particles or flakes) are two-dimensional particles due to the large aspect ratio of their dimensions, wherein two dimensions of each particle are substantially larger than a third dimension and a main axis corresponds to its longest dimension and a second axis perpendicular to the main axis corresponds to the second of the two larger dimensions. Id. ¶ 30. Appellant discloses that the processes comprise two magnetic orienting steps, a first bi-axial orientation step in which the platelet-shaped particles in the coating composition are exposed to a dynamic magnetic field, and a second mono-axial orientation step in which the bi-axially oriented particles are exposed to a static magnetic field. Spec. ¶ 11. Appellant discloses that bi-axial orientation aligns the planes of the platelet- shaped particles essentially parallel to each other in all directions, whereas mono-axial orientation aligns only the particles’ main axes parallel to each other. Id. ¶¶ 37, 38. Thereafter, the coating composition is hardening to fix the particles in this orientation. Id. 2 This Decision also cites to the Specification (“Spec.”) filed June 10, 2016, the Examiner’s Answer (“Ans.”) dated April 26, 2019, and the Reply Brief (“Reply Br.”) filed June 21, 2019. Appeal 2019-005158 Application 15/103,565 3 Claim 1, reproduced below from the Claims Appendix to the Appeal Brief, is illustrative of the claimed subject matter: 1. A process for producing an optical effect layer (OEL) on a substrate, said process comprising: a) applying on a substrate surface a coating composition comprising: i) platelet-shaped magnetic or magnetisable pigment particles; and ii) a binder material, said coating composition being in a first state, b) exposing the coating composition to a dynamic magnetic field of a first magnetic-field generating device so as to bi-axially orient at least a part of the platelet-shaped magnetic or magnetisable pigment particles, c) exposing the coating composition exposed to the dynamic magnetic field to a static magnetic field of a second magnetic-field-generating device, thereby mono-axially re- orienting at least a part of the platelet-shaped magnetic or magnetisable pigment particles, and d) hardening the coating composition exposed to the static magnetic field to a second state so as to fix the platelet- shaped magnetic or magnetisable pigment particles in their adopted positions and orientations. OPINION After review of the Examiner’s and Appellant’s opposing positions, the applied prior art, and Appellant’s claims and Specification disclosures, we determine that the Appellant’s arguments are sufficient to identify reversible error in the Examiner’s stated obviousness rejection. In re Jung, 637 F.3d 1356, 1365 (Fed. Cir. 2011). Accordingly, we reverse the obviousness rejection for the reasons set forth in the Appeal and Reply Briefs. We offer the following for emphasis. Appeal 2019-005158 Application 15/103,565 4 The Examiner finds that Raksha teaches alternative embodiments for magnetically orienting platelet-shaped magnetic pigment particles, the first embodiment (Fig. 5) applying a static magnetic field to mono-axially orient the particles and the second embodiment (Fig. 2) applying a dynamic magnetic field to bi-axially orient the particles. Ans. 3–4. The Examiner states that the rejection is based on a combination of these two embodiments because Raksha teaches that these embodiments may be combined. Id. at 4. Appellant argues, inter alia, that the Raksha fails to disclose combining these two embodiments, nor providing two sequential magnetic orientation steps.3 Appeal Br. 8–10. We agree. The Examiner has the initial duty of supplying the requisite factual basis and may not, because of doubts that the invention is patentable, resort to speculation, unfounded assumptions, or hindsight reconstruction to supply deficiencies in the factual basis. See KSR Int’l Co. v. Teleflex Inc., 550 U.S. 398, 418 (2007) (“To facilitate review, [the obviousness] analysis should be made explicit.”); see also, In re Kahn, 441 F.3d 977, 988 (Fed. Cir. 2006) (“[R]ejections on obviousness grounds cannot be sustained by mere conclusory statements; instead, there must be some articulated reasoning with some rational underpinning to support the legal conclusion of obviousness.”), quoted with approval in KSR, 550 U.S. at 418. Although the Examiner finds that Raksha teaches that the two embodiments may be combined, the Examiner fails to direct our attention to 3 Appellant also argues that Raksha fails to teach bi-axially aligning the particles via a dynamic magnetic field. Appeal Br. 5–7. Because we are persuaded of reversible error in the rejection for other reasons, we need not address this argument in our Decision. Appeal 2019-005158 Application 15/103,565 5 any support in Raksha for this finding, nor do we find any. Moreover, the Examiner fails to articulate any rationale why one skilled in the art would have combined these two embodiments together absent Appellant’s disclosure. The Examiner does not rely on Phillips to remedy these deficiencies in the rejection. Accordingly, we cannot sustain the Examiner’s obviousness rejection of claims 1–13 and 16–18 over Raksha and Phillips. CONCLUSION Upon consideration of the record and for the reasons set forth above and in the Appeal and Reply Briefs, the Examiner’s decision to reject claims 1–13 and 16–18 under 35 U.S.C. § 103 as unpatentable over Raksha in view of Phillips is reversed. DECISION SUMMARY In summary: Claims Rejected 35 U.S.C. § Reference(s)/Basis Affirmed Reversed 1–13, 16–18 103 Raksha, Phillips 1–13, 16–18 REVERSED