Ex Parte Barrett et alDownload PDFPatent Trial and Appeal BoardJan 23, 201711207473 (P.T.A.B. Jan. 23, 2017) Copy Citation 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. 11/207,473 08/18/2005 Daniel J. Barrett 08049.1024-00000 8145 22852 7590 01/25/2017 FINNEGAN, HENDERSON, FARABOW, GARRETT & DUNNER LLP 901 NEW YORK AVENUE, NW WASHINGTON, DC 20001-4413 EXAMINER FLYNN, KEVIN H ART UNIT PAPER NUMBER 3628 NOTIFICATION DATE DELIVERY MODE 01/25/2017 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): regional-desk @ finnegan. com PTOL-90A (Rev. 04/07) UNITED STATES PATENT AND TRADEMARK OFFICE BEFORE THE PATENT TRIAL AND APPEAL BOARD Ex parte DANIEL J. BARRETT, DANIEL Y. CHEN, and ROBERT W. LEE Appeal 2015-0016741 Application 11/207,4732 Technology Center 3600 Before ANTON W. FETTING, NINA L. MEDLOCK, and BRUCE T. WIEDER, Administrative Patent Judges. MEDLOCK, Administrative Patent Judge. DECISION ON APPEAL STATEMENT OF THE CASE Appellants appeal under 35 U.S.C. § 134(a) from the Examiner’s final rejection of claims 1,3, 5—11, 13, and 15—26. We have jurisdiction under 35 U.S.C. § 6(b). We REVERSE. 1 Our decision references Appellants’ Appeal Brief (“App. Br.,” filed September 15, 2014) and Reply Brief (“Reply Br.,” filed November 24, 2014), and the Examiner’s Answer (“Ans.,” mailed October 8, 2014) and Final Office Action (“Final Act.,” mailed April 14, 2014). 2 Appellants identify The United States Postal Service as the real party in interest. App. Br. 3. Appeal 2015-001674 Application 11/207,473 CLAIMED INVENTION Appellants’ claimed invention “relates to a printed postage container, and more particularly, to a printed postage container having integrated security features for transporting an article for delivery” (Spec. 12). Claims 1,11, and 23 are the independent claims on appeal. Claim 1, reproduced below, is illustrative of the claimed subject matter: 1. A container, comprising: pre-paid postage printed on the container prior to providing the container to a sender, the postage being visually perceivable by a human from all viewing angles with respect to a surface of the container; and a multi-level security element, comprising: a pseudo-latent image comprising a plurality of letters forming a word, the pseudo-latent image formed on the surface of the container at a first location and being visually perceivable by a human from fewer than all viewing angles with respect to the surface of the container; and an encoded design comprising a version of the pseudo-latent image comprising a misspelling of the word, the misspelling of the word being according to a verification code indicating an authenticated misspelling of the word, and the encoded design formed on the surface of the container at a second location different from the first location and being visually perceivable by a human, wherein, based on the verification code, the visually perceivable encoded design is compared to the visually perceivable pseudo-latent image in order to authenticate the container. 2 Appeal 2015-001674 Application 11/207,473 REJECTIONS Claims 1,3,5, 9-11, 13, 15, and 19—26 are rejected under 35 U.S.C. § 103(a) as unpatentable over Gunther (US 2003/0080182 Al, pub. May 1, 2003) , Applebaum (US 2003/0140015 Al, pub. July 24, 2003), Coe (US 5,468,581, iss. Nov. 21, 1995), Phillips (US 6,692,030 Bl, iss. Feb. 17, 2004) , and Cortina (US 2004/0066273 Al, pub. Apr. 8, 2004). Claims 6, 7, 16, and 17 are rejected under 35 U.S.C. § 103(a) as unpatentable over Gunther, Applebaum, Coe, Phillips, Cortina, and Connell (US 5,554,842, iss. Sept. 10, 1996). Claims 8 and 18 are rejected under 35 U.S.C. § 103(a) as unpatentable over Gunther, Applebaum, Coe, Phillips, Cortina, and Parkos (US 5,912,682, iss. June 15, 1999). ANALYSIS Independent Claim 1 and Dependent Claims 3, 5, 9, 10, and 24 We are persuaded that the Examiner has failed to establish a prima facie case of obviousness. In rejecting independent claim 1 under 35 U.S.C. § 103(a), the Examiner cites Gunther as disclosing a container, i.e., an envelope, with pre-paid postage visually perceivable from all viewing angles (Final Act. 3). However, the Examiner acknowledges that Gunther does not disclose a security element on the container, and cites the combination of Applebaum, Coe, Phillips, and Cortina as disclosing and/or suggesting a multi-level security element comprising a pseudo-latent image comprising a plurality of letters forming a word, the pseudo-latent image formed on the surface of the container at a first location and being visually perceivable by a human from fewer than all 3 Appeal 2015-001674 Application 11/207,473 viewing angles with respect to the surface of the container; and an encoded design comprising a version of the pseudo- latent image comprising a misspelling of the word, the misspelling of the word being according to a verification code indicating an authenticated misspelling of the word, and the encoded design formed on the surface of the container at a second location different from the first location and being visually perceivable by a human, as recited in claim 1. In this regard, the Examiner cites (1) Applebaum as disclosing that envelopes may include a plurality of security measures, such as watermarks, i.e., a multi-level security element (id. at 4 (citing Applebaum || 226, 237)); (2) Coe as disclosing a security watermark, i.e., a latent image, that is only visible at certain angles to the human eye (id. (citing Coe, Figs. 2 and 3; col. 1,11. 27—30 and 56—59)); (3) Phillips as disclosing that a watermark may include a series of words and that, within the series, a particular word may be intentionally modified (id. (citing Phillips, Figs. 11, 13; col. 7,11. 31—46; col. 8,1. 52—col. 9,1. 9)); and (4) Cortina as disclosing that intentional modifications to watermark words include intentional misspellings (id. (citing Cortina 41 42)). The Examiner maintains that it would have been obvious at the time of Appellants’ invention to combine the features of Applebaum, Coe, Phillips, and Cortina to arrive at a multi-level security element, as called for in claim 1 (id. at 4—5; see also Ans. 2-4). But the Examiner does not adequately explain how, and we fail to see how, the combination of Applebaum, Coe, Phillips, and Cortina discloses or suggests “a pseudo- latent image comprising a plurality of letters forming a word . . . formed on the surface of the container at a first location” and “an encoded design comprising a version of the pseudo-latent image . . . formed on the surface of 4 Appeal 2015-001674 Application 11/207,473 the container at a second location different from the first location,” as recited in claim 1. The Examiner cites Phillips as disclosing a watermark that includes a plurality of words (see Ans. 2). However, as Appellants correctly observe, Phillips fails to disclose or suggest a pseudo-latent image at a first location and an encoded design comprising a version of the pseudo-latent image at a second location different from the first location (App. Br. 12). Phillips discloses a counterfeit-resistant document comprising a substrate and a nano-pattern of nano-structures disposed on the substrate; the nano-pattem forms one of a foreground and a background of a latent message and another pattern, e.g., a conventional pattern or another nano- pattem, forms the other of the foreground and background of the latent message; the foreground and background exhibit substantially similar visual densities on an original document, and exhibit substantially different visual densities on the copied document (Phillips, Abstract). The nano-pattem and the other pattern, as disclosed in Phillips, are overlaid at the same location on the substrate, i.e., not at a first location and a second location different from the first location, to form a latent image that appears on a copy of the document (see id. at col. 3,11. 9-32). Responding to Appellants’ argument that Phillips does not disclose or suggest a pseudo-latent image at a first location and an encoded design comprising a version of the pseudo-latent image at a second location different from the first location, the Examiner asserts that “Phillips was never cited for the nano-pattem/substrate concept” but instead was cited “for the particular design of the security mark, which includes a plurality of words in a plurality of locations” (Ans. 3 4). But the Examiner does not 5 Appeal 2015-001674 Application 11/207,473 otherwise explain how the combination of Applebaum, Coe, Phillips, and Cortina discloses and/or suggests the argued feature. The Examiner has failed, on the present record, to establish a prima facie case of obviousness. Therefore, we do not sustain the Examiner’s rejection of independent claim 1 under 35 U.S.C. § 103(a). For the same reasons, we also do not sustain the rejection of dependent claims 3, 5, 9, 10, and 24. Cf. In re Fritch, 972 F.2d 1260, 1266 (Fed. Cir. 1992) (“dependent claims are nonobvious if the independent claims from which they depend are nonob vious”). Independent Claims 11 and 23 and Dependent Claims 13, 15, 19—22, 25, and 26 Independent claims 11 and 23 include language substantially similar to the language of claim 1 and stand rejected based on the same rationale applied with respect to claim 1 (Final Act. 3—7). Therefore, we do not sustain the Examiner’s rejection under 35 U.S.C. § 103(a) of independent claims 11 and 23, and claims 13, 15, 19—22, 25, and 26, which depend therefrom, for the same reasons set forth with respect to claim 1. Dependent Claims 6—8 and 16—18 Claims 6—8 and 16—18 depend from claims 1 and 11, respectively. The Examiner’s rejections of these dependent claims do not cure the deficiency in the Examiner’s rejection of independent claims 1 and 11. Therefore, we do not sustain the Examiner’s rejection under 35 U.S.C. § 103(a) of claims 6—8 and 16—18 for the same reasons set forth with respect to the independent claims from which they depend. 6 Appeal 2015-001674 Application 11/207,473 DECISION The Examiner’s rejections of claims 1,3, 5—11, 13, and 15—26 under 35 U.S.C. § 103(a) are reversed. REVERSED 7 Copy with citationCopy as parenthetical citation