Tomomichi Dougase et al.

Patent Trials and Appeals Board

Aug 30, 2019

14347694 - (D) (P.T.A.B. Aug. 30, 2019)

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.
14/347,694 05/29/2014 Tomomichi Dougase 1424787.105US9 8528
21874 7590 08/30/2019
Locke Lord LLP
P.O. BOX 55874
BOSTON, MA 02205
EXAMINER
POWERS, LAURA C
ART UNIT PAPER NUMBER
1785
NOTIFICATION DATE DELIVERY MODE
08/30/2019 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):
patent@lockelord.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
____________________

BEFORE THE PATENT TRIAL AND APPEAL BOARD
____________________

Ex parte TOMOMICHI DOUGASE, OSAMU GOTOU, and
YUUICHI ISEMORI
____________________

Appeal 2018-002423
Application 14/347,694
Technology Center 1700
____________________
Before KAREN M. HASTINGS, MICHAEL P. COLAIANNI, and
JANE E. INGLESE, Administrative Patent Judges.

HASTINGS, Administrative Patent Judge.
DECISION ON APPEAL
Appellants1 seek our review under 35 U.S.C. § 134(a) of the
Examiner’s decision rejecting claims 1–9, 11, and 14–16 under 35 U.S.C.
§ 103 over at least the combined prior art of Brouhon (US 6,962,450 B2,
issued Nov. 8, 2005) with either one of Klass (US 2003/0051637 A1, issued
Mar. 20, 2003) or Yuichi (JP 2010-085532 A, published Apr. 15, 2010; as
translated).2 The claims are also rejected under 35 U.S.C. § 112 for lack of

1 The real party in interest is stated to be Dai Nippon Printing Co., Ltd.
(Appeal Br. 1).
2 The Examiner applies additional prior art to various dependent claims (see,
e.g., Final Action). A discussion of these references is not necessary for
disposition of this appeal.
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enablement over the full scope of the claimed subject matter, for failing to
comply with the written description, and for being indefinite. An oral
hearing was conducted on August 20, 2019.
We have jurisdiction over the appeal under 35 U.S.C. § 6(b).
We AFFIRM.
Independent claim 1 is illustrative of the subject matter on appeal
(emphasis added to highlight key limitation in dispute):
1. A pattern-printed sheet, comprising:
a substrate;
a precoat layer laminated on the substrate;
a first region printed on the precoat layer and
comprising a first dot pattern in which a pattern in one
part differs from a pattern in another part such that
locations of dots in the first dot pattern can be identified
from a lay-out relation of the dots in the first dot pattern
that is optically readable by an input terminal; and
a second region printed on the precoat layer
adjacent to the first region and comprising a second dot
pattern, different from the first dot pattern, in which the
dots are arranged in order such that locations of dots in
the second dot pattern cannot be identified from a lay-out
relation of the dots in the second dot pattern by an input
terminal;
wherein the second dot pattern comprises dots
arranged in order and is a halftone tint having regularity
whose halftone dot concentration is in the range of 10 to
30%.

ANALYSIS
The § 112 lack of enablement rejection
As explained in LizardTech, Inc. v. Earth Resource Mapping, Inc.:
A claim will not be invalidated on section 112 grounds simply
because the embodiments of the specification do not contain
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examples explicitly covering the full scope of the claim
language. That is because the patent specification is written for
a person of skill in the art, and such a person comes to the
patent with the knowledge of what has come before. Placed in
that context, it is unnecessary to spell out every detail of the
invention in the specification; only enough must be included to
convince a person of skill in the art that the inventor possessed
the invention and to enable such a person to make and use the
invention without undue experimentation.
424 F.3d 1336, 1345 (Fed. Cir. 2005) (citing Union Oil Co. v. Atl. Richfield
Co., 208 F.3d 989, 997 (Fed. Cir. 2000); In re GPAC Inc., 57 F.3d 1573,
1579 (Fed. Cir. 1995)).
Upon consideration of the record, we find that the preponderance of
evidence supports the Appellants’ position that the claims are enabled. As
Appellants point out, the Examiner has not explicitly addressed their
position which states that the differences between the regularities in the
optically readable region and the optically unreadable region is clear from
the Spec. ¶¶ 14–16 and fall within the technical common knowledge of those
skilled in the art (Appeal Br. 5–8; Ans. 7, 8; Reply Br. 4, 5). The
Examiner’s mere conclusion that there is a lack of guidance or examples in
the Specification (Ans. 31) is insufficient in light of the uncontested
examples and prior art described by Appellants. Notably, the Examiner does
not even allege that the experimentation needed to use other optically
unreadable patterns than those exemplified (e.g., the Anoto pattern) would
have required undue experimentation, that is, would not have been routine
experimentation in the art (Ans. generally).
Accordingly, we reverse the Examiner’s rejection of the claims under
§ 112 for a lack of enablement.

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The § 112 rejection of claim 1 for failing to comply with the written
description requirement

For an applicant to comply with the 35 U.S.C. § 112, first paragraph,
written description requirement, the applicant’s specification must “convey
with reasonable clarity to those skilled in the art that, as of the filing date
sought, he or she was in possession of the invention.” Carnegie Mellon
Univ. v. Hoffmann-La Roche Inc., 541 F.3d 1115, 1122 (Fed. Cir. 2008)
(quoting Vas-Cath Inc. v. Mahurkar, 935 F.2d 1555, 1563–64 (Fed. Cir.
1991)).
Claim 1 recites that the first region of claim 1 comprises “a first dot
pattern in which a pattern in one part differs from a pattern in another part”
and that the second dot pattern has “dots . . . arranged in order such that
locations of dots in the second dot pattern cannot be identified for a lay-out
relation of” these dots (Claims Appendix, Appeal Br. 28). The Examiner
acknowledged that while the Specification described prior dot patterns in
which this occurred (e.g., the Anoto pattern, and the half-tone pattern with
“uniform concentration” (Spec. ¶ 16, also Spec. ¶¶ 14, 15)), these limitations
were “not supported” in the Specification (Final Action 6), further
explaining that the wording now used in the claims was not recited in
paragraphs 14 and 16 of the Specification (Ans. 31, 32). Appellants’
position is that since the Specification states that the Anoto pattern may be
used, as well as other known optically readable patterns, and that the
optically unreadable region is formed by dots laid out with regularity, this
adequately shows that Appellants had possession of the claimed first and
second regions (Appeal Br. 10–12; Reply Br. 6, 7).
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We agree with Appellants that a preponderance of the evidence
supports Appellants’ position that one of ordinary skill in the art would have
understood that the originally filed Specification encompasses a first dot
pattern and a second dot pattern as claimed. Cf. Union Oil Co. of Cal. v. Atl.
Richfield Co., 208 F.3d 989, 997 (Fed. Cir. 2000) (The claim need not use
the same words as the specification; it is enough that one of ordinary skill in
the art would recognize that the inventor invented what is claimed).
Accordingly, we reverse the Examiner’s § 112 rejection on appeal for
failing to comply with the written description requirement.
The § 112 for indefiniteness
During prosecution, claims are definite if they “set out and
circumscribe a particular area with a reasonable degree of precision and
particularity.” In re Moore, 439 F.2d 1232, 1235 (CCPA 1971) (and “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.”)
The Examiner admits that the term “lay-out” is commonly known to
mean the plan or design or arrangement of something laid out, yet states it is
unclear how the relation of dots can be identified by a lay-out relation of the
dots in the first dot pattern (or the second dot pattern) (Final Action 7, 8).
The Examiner further states it is unclear how the optical readability of each
pattern differs (Ans. 33). Appellants explain that paragraphs 14 to 16 of
their Specification adequately describe and make clear what is meant by the
claim language, such that one of ordinary skill in the art would have
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understood the meaning of the claim language (Appeal Br. 12, 13; Reply Br.
7, 8).
We reverse the Examiner’s § 112 rejection of the claims based on
indefiniteness, since we agree with Appellants that one of ordinary skill in
the art would have understood the broadest reasonable interpretation of the
claim language in light of the Specification, as discussed throughout the
prosecution history.
The § 103 Rejections based on Brouhon
Upon consideration of the evidence on this record and each of
Appellants’ contentions, we find that the preponderance of evidence
supports the Examiner’s conclusion that the subject matter of Appellants’
claims is unpatentable over the applied prior art. We sustain the Examiner’s
§ 103 rejections essentially for the reasons set out by the Examiner in the
Answer.
We add the following primarily for emphasis.
Appellants’ principal argument regarding claim 1 is that Brouhon
(whether combined with Klass or Yuichi) does not teach its first dot pattern
is adjacent to its second dot pattern because Brouhon teaches that the second
pattern (markings 7) is superimposed on the first pattern 6 (e.g., Appeal Br.
14, 19; Reply Br. 10).
Appellants’ arguments are not persuasive of reversible error. The
Examiner aptly points out that the claim language fairly encompasses
Brouhon, illustrating via an annotated Fig. 3 of Brouhon that the claim
language is open-ended, not limited, and does not necessarily preclude
overlapping/superimposed patterns (e.g., Ans. 34; Final Action 12).
Notably, we do not find—and Appellants have not directed our attention
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to—any limiting definitions in the Specification, nor do Appellants provide
any persuasive reasoning or credible evidence to establish that the
Examiner’s interpretation of the language of claim 1 is unreasonable. In re
ICON Health & Fitness, Inc., 496 F.3d 1374, 1379 (Fed. Cir. 2007) (If the
specification does not provide a definition for claim terms, “a broad
construction during prosecution creates no unfairness to the applicant or
patentee” since applicants may amend claims to narrow their scope).
Appellants have also not shown error in the Examiner’s interpretation
that the language of dependent claims 14 and 15 also encompass and/or is
rendered obvious by the pattern(s) and markings of Brouhon as being
“formed contiguously” (claim 14) and/or “formed with a space
therebetween” (claim 15; notably, there are no limits on the size of “a
space”) (Final Action 15, 16; Appeal Br. 16–18; Reply Br. 10–12).
Accordingly, we affirm the Examiner’s prior art rejections of the
claims under 35 U.S.C. § 103(a) for the reasons given above and presented
by the Examiner.
DECISION
The Examiner’s § 103 rejections are affirmed.
TIME PERIOD FOR RESPONSE
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).
AFFIRMED