Ex Parte Barrett et al

Patent Trial and Appeal Board

Jan 23, 2017

11207473 (P.T.A.B. Jan. 23, 2017)

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.
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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
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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
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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
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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.
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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
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