Ex Parte Beretta

Patent Trial and Appeal Board

May 31, 2013

11280897 (P.T.A.B. May. 31, 2013)

UNITED STATES PATENT AND TRADEMARK OFFICE
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BEFORE THE PATENT TRIAL AND APPEAL BOARD
____________________

Ex parte GIORDANO BERETTA
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Appeal 2011-003455
Application 11/280,897
Technology Center 3700
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Before STEFAN STAICOVICI, BENJAMIN D. M. WOOD, and
HYUN J. JUNG, Administrative Patent Judges.

WOOD, Administrative Patent Judge.

DECISION ON APPEAL

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STATEMENT OF CASE
Appellant appeals under 35 U.S.C. § 134(a) from a rejection of claims
1-9, 11, and 12. Claims 10 and 13-19 have been withdrawn. We have
jurisdiction under 35 U.S.C. § 6(b).
We affirm-in-part.
THE INVENTION
The claims are directed to a product package article having a security
pattern based on simultaneous color contrast. Claim 1, reproduced below, is
illustrative of the claimed subject matter:
1. A product package article comprising an HVS-
perceivable security pattern on a surface of the article,
the security pattern based on simultaneous color
contrast.
REFERENCES
Ames
Look
US 1,612,791
US 5,670,005
Jan. 4, 1927
Sep. 23, 1997
Bhaskar
Hudson
US 2003/0043424 A1
US 2003/0161017 A1
Mar. 6, 2003
Aug. 28, 2003

Simultaneous and Successive Contrast,
http://colorusage.arc.nasa.gov/Simult_and_succ_cont.php (last visited
September 22, 2009) (hereinafter “SSC”).

REJECTIONS
Claim 9 stands rejected under 35 U.S.C. § 112, second paragraph, as
indefinite. Ans. 3.
Claims 1-4 and 6-8 stand rejected under 35 U.S.C. § 102(b) as
anticipated by Look. Ans. 3-4.
Claims 1-3, 6-8, 11, and 12 stand rejected under 35 U.S.C. § 103(a) as
unpatentable over SSC and Hudson. Ans. 4-5.
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Claim 5 stands rejected under 35 U.S.C. § 103(a) as unpatentable over
SSC, Hudson, and Bhaskar. Ans. 7.
Claim 9 stands rejected under 35 U.S.C. § 103(a) as unpatentable over
SSC, Hudson, and Ames. Ans. 8.
ANALYSIS
Claim 9 – Indefiniteness
In the Examiner’s Answer the Examiner entered a new ground of
rejection of claim 9 as indefinite. Ans. 3. The Examiner stated that “[c]laim
9 recites ‘a method of reading a pattern that was added to a document
according to the method of claim 1’ however claim 1 recites a product
package article, and thus it is unclear what the scope of claim 9 is.” Id.
Appellant does not present any argument in response to this rejection, and in
fact acknowledges that claim 9 contains a typographical error and therefore
“Appellant has decided not to pursue claim 9 at this time.” Reply Br. 5.
Accordingly, we summarily sustain this rejection. See In re Berger, 279
F.3d 975 (Fed. Cir. 2002) (holding that Board did not err in sustaining a
rejection under 35 U.S.C. § 112, second paragraph, when the Appellant
failed to contest the rejection on appeal) and MPEP § 1205.02.
Claims 1-4 and 6-8 – Anticipation – Look
Appellant argues claims 1-4 and 6-8 as a group. App. Br. 8. We
select claim 1 as representative, with claims 2-4 and 6-8 standing or falling
with claim 1. 37 C.F.R. § 41.37(c)(1)(vii).
Claim 1 calls for a product package article (e.g., a label or sticker)
comprising an “HVS[(human visual system)]-perceivable security pattern on
a surface, the security pattern based on simultaneous color contrast.” App.
Br. 18 (Claims Appx.); Spec., paras. [0014], [0022]. The Specification
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describes the phenomenon of simultaneous color contrast as “the mutual
influence of two adjacent colors caus[ing] each to enhance or reduce the
other’s saturation and even substantially alter their respective hues.” Spec.,
para. [0014]. Figure 1 illustrates a simple example of a product security
label containing two security patterns, each having a light gray star; in the
first pattern the star 112 appears on a black background 114, in the second
pattern the star 122 appears on a white background 124. Id. at para. [0016].
According to the Specification, the star 112 on the black background 114
would appear lighter than the star 122 on the white background 124, even
though the stars are the same color. Id. Thus, “a counterfeiter would
perceive slightly different colors of the stars [and] . . . would reproduce the
patterns . . . with a white star and a gray star.” Id. A template can be used to
view the stars in isolation, i.e., without the influence of any adjacent
contrasting colors, to detect the incorrect reproduction. Id. at para. [0024].
The Examiner found that Look’s secure information product 600
contains all of the limitations of claim 1. Ans. 3-4. Secure information
product 600 is shown and described as having region 603 with a first color,
region 605 with a second color, and region 607 – the border adjacent to both
region 603 and 605 – with a third color. See Look, col. 16, ll. 45-55; fig. 24.
The Examiner found, inter alia, that product 600 contains an “HVS-
perceivable security pattern on the surface of the article (i.e., color fields
603, 607, and the indicia having variegated [sic, varied] colors[, and that a]
simultaneous color contrast results from the contrasting colors of 603 and
605, creating a first pattern.” Ans. 4 (citing Look, col. 16, ll. 45-55; fig. 24).
The Examiner additionally found that Look discloses first and second
patterns based on simultaneous color contrast, with “each of the first and
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second patterns contain[ing] adjacent contrasting colors (603/607 and
605/607, respectively) and each shar[ing] the same color (field 607).” Id.
Appellant responds that Look does not disclose or suggest that the
different colors used in product 600 produce a simultaneous color contrast.
App. Br. 6-7; Reply Br. 1-2. We do not find this argument persuasive,
because the Examiner’s position is not that Look expressly teaches using
simultaneous color contrast, but that that the simultaneous color contrast
phenomenon inherently results from the differently colored regions adjacent
to each other in Look’s product 600. See Final Rej. 8; Ans. 9. The
Examiner also found that there was no structural difference between the
varied color patterns of product 600 and the claimed security patterns based
on simultaneous color contrast. Id.
Appellant challenges these latter findings. According to Appellant,
[T]he security pattern based on simultaneous color contrast is
specifically structured to create an illusion that can impede
counterfeiting. By contrast, the mere use of varying colors
would not necessarily create such an illusion. Thus, the use of
varied colors does not inherently result in a security pattern
based on simultaneous color contrast, as recited in independent
claim 1.
App. Br. 8.
This argument does not persuade us that the Examiner erred in finding
anticipation. Look’s product 600 satisfies the Specification’s broad
description of simultaneous color contrast. As noted above, the
Specification describes simultaneous color contrast as “the mutual influence
of two adjacent colors caus[ing] each to enhance or reduce the other’s
saturation and even substantially alter their respective hues,” and that “[t]wo
contrasting colors together will make each other more saturated and vivid.”
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Spec., para. [0014] (emphasis added). The Specification places no limit on
which colors need to be adjacent to produce this simultaneous-color-contrast
effect or otherwise to impede counterfeiting. As the Examiner found,
product 600 contains two patterns of “two adjacent colors,” i.e., regions
603/607 and regions 605/607, and thus satisfies the Specification’s broad
description of simultaneous color contrast. Ans. 4. The Examiner thus had
reason to believe that product 600 was capable of “creat[ing] an illusion that
can impede counterfeiting,” i.e., that the “security pattern” claim term did
not require any structure beyond that contained within product 600. See In
re Schreiber, 128 F.3d 1473, 1478 (Fed. Cir. 1997) (“where the Patent
Office has reason to believe that a functional limitation asserted to be critical
for establishing novelty in the claimed subject matter may, in fact, be an
inherent characteristic of the prior art, it possesses the authority to require
the applicant to prove that the subject matter shown to be in the prior art
does not possess the characteristic relied on” (internal quotation omitted));
In re Best, 562 F.2d 1252, 1254-55 (CCPA 1977) (same); In re Spada, 911
F.2d 705, 708 (Fed. Cir. 1990) (“when the PTO shows sound basis for
believing that the products of the applicant and the prior art are the same, the
applicant has the burden of showing that they are not”). Appellant did not
provide evidence or persuasive argument in support of its assertion that
product 600 requires additional structure or that “the mere use of varying
colors would not necessarily create [an illusion that can impede
counterfeiting].” App. Br. 8. See In re Geisler, 116 F.3d 1465, 1470 (Fed.
Cir. 1997) (unsupported attorney argument is deserving of little weight). We
therefore sustain the Examiner’s rejection of claims 1-4 and 6-8 as
anticipated by Look.
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Claims 1-3, 6-8, 11, and 12 – Obviousness – SSC and Hudson
As noted above, independent claim 1 is drawn to a product package
article with a security pattern based on simultaneous color contrast. App.
Br. 18. Independent claim 11 is drawn to a method of protecting a product
against counterfeiting by using first and second spaced apart security
patterns, “each security pattern including adjacent objects of colors having
different contrast levels, where the patterns create an illusion that adjacent
objects have different colors. . Id. at 19. For claim 1, the Examiner found
that SSC discloses two HVS-perceivable patterns demonstrating the
simultaneous color contrast phenomenon, but does not specifically teach
applying the two patterns to a product package article for security purposes.
Ans. 5. The Examiner then found that Hudson teaches protecting products
from counterfeiting using security labeling. Id. (citing Hudson, para.
[0007]). The Examiner concluded that “[i]t would have been obvious to one
of ordinary skill in the art at the time the invention was made to provide the
simultaneous color contrast pattern taught in SSC on a product as a special
security printing to provide an optically variable device that is difficult to
counterfeit.” Id. The Examiner additionally determined that
[a]ll of the claimed elements were known in prior art and one
skilled in the art could have combined the elements as claimed
by known methods with no change in their respective functions,
and the combination would have yielded predictable results to
one of ordinary skill in the art at the time of the invention.
Id. at 5-6. For claim 11, the Examiner made similar findings and
determination of obviousness. Id. at 7.
Appellant argues, inter alia, that
neither reference discloses, or even remotely suggests, using
simultaneous color contrast in a security pattern. . . . [T]o the
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extent that special security printing on products may be known,
this is not sufficient to show that use of simultaneous color
contrast in a security pattern was known or is obvious.
App. Br. 11. Appellant additionally argues that the references teach away
from their combination; in particular, SSC describes simultaneous color
contrast as undesirable, and teaches several techniques for avoiding it. App.
Br. 13 (citing SSC, paras. 8, 10, 12).
We agree with Appellant that the Examiner has not made out a prima
facie case of obviousness with respect to independent claims 1 and 11.
Essentially, while SSC teaches a person of ordinary skill in the art about
simultaneous color contrast, neither it nor Hudson teaches or suggests that a
printed label with contrasting color patterns would be difficult to accurately
reproduce, or would otherwise be useful in impeding product counterfeiting.
Likewise, while the Examiner is correct that the claimed elements were
known in the prior art and could have been combined by known methods,
the Examiner has not adequately shown or explained how the combination
would have yielded predictable results, i.e., with each element performing
the same function it had been known to perform. In other words, the
Examiner has not adequately explained how Hudson’s security label would
reasonably have been expected to maintain its function of impeding
counterfeiting, given that neither Hudson nor SSC teach or suggest that
simultaneous color contrast patterns are difficult to accurately reproduce.
See Sundance, Inc. v. DeMonte Fabricating Ltd., 550 F.3d 1356, 1366-67
(Fed. Cir. 2008) (“a combination is more likely to be obvious where it
simply arranges old elements with each performing the same function it had
been known to perform and yields no more than one would expect from such
an arrangement” (internal quotation omitted)). Accordingly, we do not
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sustain the Examiner’s rejection of claims 1-3, 6-8, and 11-12 as obvious
over SSC and Hudson.
Claim 5 – Obviousness – SSC, Hudson, and Bhaskar
Bhaskar is not relied upon to cure the deficiencies in the combination
of SSC and Hudson noted in the previous section. We accordingly do not
sustain this rejection.
Claim 9 – Obviousness – SSC, Hudson, and Ames
Ames is not relied upon to cure the deficiencies in the combination of
SSC and Hudson noted in the previous section. We accordingly do not
sustain this rejection.
DECISION
For the above reasons, the Examiner’s rejections of claim 9 as
indefinite, and of claims 1-4 and 6-8 as anticipated, are affirmed. The
Examiner’s rejections of claims 1-3, 6-8, 11, and 12 as obvious over SSC
and Hudson, of claim 5 as obvious over SSC, Hudson, and Bhaskar, and of
claim 9 as obvious over SSC, Hudson, and Ames, are reversed.
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)(iv).
AFFIRMED-IN-PART

ELD