Ex Parte Chatow et al

Patent Trial and Appeal Board

Jan 31, 2017

11799444 (P.T.A.B. Jan. 31, 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
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APPLICATION NO. FILING DATE FIRST NAMED INVENTOR ATTORNEY DOCKET NO. CONFIRMATION NO.
11/799,444 04/30/2007 Ehud Chatow 82229444 6078
22879
HP Tnr
7590 02/02/2017 EXAMINER
3390 E. Harmony Road
Mail Stop 35
GRABOWSKI, KYLE ROBERT
FORT COLLINS, CO 80528-9544 ART UNIT PAPER NUMBER
3725
NOTIFICATION DATE DELIVERY MODE
02/02/2017 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):
ipa.mail@hp.com
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y vonne.bailey @ hp. com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte EHUD CHATOW, GALIA GOLODETZ,
STEVEN J. SIMSKE, and GAL VICTOR
Appeal 2014-007654
Application 11/799,4441
Technology Center 3700
Before CHARLES N. GREENHUT, PATRICK R. SCANLON, and
BART A. GERSTENBLITH, Administrative Patent Judges.
SCANLON, Administrative Patent Judge.
DECISION ON APPEAL
STATEMENT OF THE CASE
Appellants seek our review under 35 U.S.C. § 134 of the Examiner’
decision rejecting claims 1—20, which are all of the pending claims. We
have jurisdiction under 35 U.S.C. § 6(b).
1 According to Appellants, the real party in interest is Hewlett-Packard
Development Company, LP, a wholly-owned affiliate of Hewlett-Packard
Company. Appeal Br. 1.
Appeal 2014-007654
Application 11/799,444
We AFFIRM-IN-PART and designate our affirmance as NEW
GROUNDS OF REJECTION pursuant to our authority under 37 C.F.R.
§ 41.50(b).
CLAIMED SUBJECT MATTER
The claims are directed to “a covert label. . . whose complete
information is not revealed until the label is activated.” Spec. 3,11. 22—23.
Claims 1, 9, and 18 are the independent claims on appeal. Claims 1 and 18
are illustrative of the claimed subject matter and are reproduced below.
1. A covert label comprising:
a substrate comprising a field of ink;
ink disposed within said field of ink, wherein
said ink is operable to preferential removal
according to a preconfigured pattern, wherein said
preconfigured pattern is unrevealed, comprises an
incentive and comprises information associable
with at least one object; and
an ink removal mechanism disposed over
said field of ink and comprising an adhesive surface
coupled with said ink, wherein activation of said ink
removal mechanism reveals said preconfigured
pattern such that said preconfigured pattern is
unrevealed until activation of said ink removal
mechanism, wherein said activation allows said at
least one object to be operable.
18. A method of implementing a covert label for
tracking a preconfigured pattern to a database
comprises:
coupling said covert label to an object that is
an end-user product, said covert label comprising
said preconfigured pattern, wherein said
preconfigured pattern is unrevealed;
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coupling a revealing mechanism which is
operable to irreversibly reveal said preconfigured
pattern by removing ink based on said
preconfigured pattern that comprises an incentive;
and
presenting said incentive to activate said
revealing mechanism and for reporting information
comprised within said preconfigured pattern to said
database once said preconfigured pattern is
revealed.
Appeal Br. 12, Claims App.
REFERENCES
The Examiner relies upon the following prior art references:
Adamoli
Smits
Hoffer
Fiala
US 4,718,553
US 4,837,061
US 5,633,058
US 2003/0004889 A1
Jan. 12, 1988
June 6, 1989
May 27, 1997
Jan. 2, 2003
REJECTIONS
The following rejections are before us on appeal:
I. Claims 1—16 stand rejected under 35 U.S.C. § 102(b) as being
anticipated by Hoffer.
II. Claims 9 and 17 stand rejected under 35 U.S.C. § 102(b) as
being anticipated by Adamoli.
III. Claims 18—20 stand rejected under 35 U.S.C. § 103(a) as
unpatentable over Fiala and Smits.
ANALYSIS
Rejection I
Hoffer discloses “a composite tape adapted to be secured to an object
and, when removed from that object, to provide a visible indication
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(‘message’) on the object which was not theretofore visible.” Hoffer, 1:5—8.
For example, composite tape 2 is wrapped around an object such as carton 4
so as to retain carton flaps 6 and 8 in a closed position. Id. at 4:12—20,
Fig. 1. As shown in Figure 4, the composite tape comprises transparent
backing sheet 12, patterned layer 14 of release material, print layer 16,
adhesive layer 18, and second release layer 20. Id. at 4:30-5:3, Fig. 4.
Patterned layer 14 is not visible while tape 2 is secured to carton 4. Id. at
5:10—13, Fig. 1. But when tape 2 is removed from carton 4, the portion of
print layer 16 separated from backing sheet 12 by patterned layer 14 will
remain in place, thereby “exhibiting the message of the pattern” such as the
word “void.” Id. at 5:16—24, Fig. 3.
The Examiner finds that Hoffer discloses a covert label comprising:
a substrate (object) 6 comprising a field of ink 16 (Fig. 3),
wherein said ink is operable to preferential removal according to
a preconfigured pattern 14 (Abstract, Fig. 5) distinct to the object
as it is directly applied to that object; an ink removal mechanism
12 is disposed over and has an adhesive surface in contact with
the portions of the field of ink 16 thus to irreversibly reveal the
preconfigured pattern upon activation (peeling) of the ink
removal mechanism 12.
Final Act. 2. Regarding the claim 1 limitation that the preconfigured pattern
comprises an incentive, the Examiner finds that one of the revealed patterns
or messages disclosed by Hoffer—“For Export Only”—is an incentive not to
return the object which has been marked. Id.
Regarding the claim 1 limitation “wherein said activation allows said
at least one object to be operable,” the Examiner states merely that this
limitation “does not limit the structure of the covert label being claimed.”
Id. at 3. It is not clear, however, how this statement—even if accurate—
establishes that Hoffer discloses the claim limitation. If the Examiner’s
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position is that this claim limitation is not entitled to patentable weight
because it allegedly does not limit the label structure, such position is not
clearly made nor adequately supported. The Examiner also determines that
the difference between printed matter “wherein said activation
[revealing] allows said at least one object to be operable” and any
other printed matter (e.g. For Export Only) is the particular
content of the printed matter. This difference is a non-patentable
distinction since the printed matter is not functionally related to
the substrate (but rather intended use of the content of the printed
matter after activation).
Id. at 7; see also Ans. 2 (arguing that the making operable limitation is
drawn to an intended use of the object). We do not agree with this
determination, however, because the claim limitation relates to the activation
of the ink removal mechanism and does not involve printed matter.
We note, however, that Hoffer discloses that “to gain access to the
interior of the carton 4 , one must remove the tape 2 from over the
line 10 so that the flaps 6 and 8 can be opened to expose the carton
contents.” Hoffer, 4:22—26. When flaps 6 and 8 are opened, the contents of
carton 4 can be removed. Accordingly, removing tape 2 renders carton 4
operable in the sense that flaps 6 and 8 can be freely opened and closed. As
such, Hoffer discloses that removing tape 2 (i.e., activating the ink removal
mechanism), allows carton 4 to be operable.
Appellants argue that Hoffer is “directed toward tamper notification
indicating that an object has been tampered with.” Appeal Br. 4 (citing
Hoffer, Abstract). According to Appellants, such a tamper notification is a
disincentive for making an object operable and, therefore, does not teach the
claim 1 limitation of activation allowing an object to be operable. Id. at 4—5.
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This argument is not persuasive. First, we disagree that Hoffer’s
tamper notification function is a disincentive to open carton 4 (i.e., make the
carton operable). At best, this function would be a disincentive to
unauthorized opening of the carton, but there would be no disincentive for
the intended recipient to open the carton.2 That is, the intended recipient of
the carton would be incentivized to open the carton to access the carton’s
contents, despite the tamper notification. Second, claim 1 does not recite an
incentive to make an object operable. Rather, claim 1 merely recites that
activation of the ink removal mechanism “allows said at least one object to
be operable.” Hoffer discloses this limitation because, as discussed above,
removal of Hoffer’s tape 2, which entails activating the ink removal
mechanism (transparent backing sheet 12), allows carton 4 to be operable.
Appellants also argue that the phrases “For Export Only” and “void,”
examples of messages revealed by the label of Hoffer, “would be the same
for all objects and therefore could not anticipate ‘an incentive and
information that is distinct to said object,’ as recited by independent
Claim 9.”3 Reply Br. 2. We disagree. The phrase “For Export Only,” as
used in Hoffer’s label, is distinct to the carton the label is applied to because
it identifies that particular carton as being wrongfully returned. Hoffer,
3:44—51. Similarly, the term “void,” as used in Hoffer’s label, is distinct to
2 We are not convinced that Hoffer’s invention necessarily creates a
disincentive to unauthorized opening of the carton because, in many
instances, a person improperly opening the carton would not know about the
tamper notification function until after the tape is removed.
3 This argument is Appellants’ only argument that is directed specifically to
independent claim 9. Otherwise, Appellants argue independent claims 1 and
9 together. Appeal Br. 5.
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the carton the label is applied to because it indicates that that particular
carton has been tampered with. Id. at 1:43—45, 2:29-30, 4:36—38.
In view of the above, Appellants’ arguments do not apprise us of
error, and we sustain the rejection of independent claims 1 and 9.
Appellants rely on the same arguments made in connection with claims 1
and 9 in asserting the patentability of dependent claims 2—8 and 10—16.
Appeal Br. 5. As such, claims 2—8 and 10-16 fall with claims 1 and 9. See
37 C.F.R. § 41.37(c)(l)(iv) (2015). Because our reasoning differs from that
of the Examiner, however, we designate our affirmance of the rejection of
claims 1—16 as a “new ground” so as to afford Appellants a fair opportunity
to respond. In re Leithem, 661 F.3d 1316, 1320 (Fed. Cir. 2011).
Rejection II
The Examiner finds that Adamoli discloses applying field of ink 40 to
substrate 10, patterning preconfigured pattern 42 on the ink, and coupling
revealing mechanism 50, operable to reveal the preconfigured pattern. Final
Act. 4. The Examiner also finds that preconfigured pattern 42 invisibly
identifies an object and is unrevealed until removal of the revealing
mechanism. Id. Regarding the claim 9 limitation that the preconfigured
pattern comprises an incentive, the Examiner finds that one of the revealed
patterns or messages disclosed by Adamoli—“UNSAFE”—is an incentive to
treat the object with caution. Id.
Regarding the claim 9 limitation “wherein said activation allows said
at least one object to be operable such that without activation said object is
not operable,” the Examiner determines merely that this limitation “does not
limit the structure of the covert label being claimed.” Id. at 5. The
Examiner also determines that this claim limitation is not patentably distinct
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because it is drawn to printed matter that is not functionally related to the
substrate and an intended use of the object. Id. at 7; Ans. 2. These
determinations are essentially the same positions the Examiner took in
connection with the rejection based on Hoffer. We find these determinations
erroneous for the same reasons discussed above.
We note, however, that Adamoli discloses that once carton blank 10 is
folded into a rectangular shape, the product is inserted through the open top
of the erected carton, and then top tabs 28 are folded down and secured in
place by top flaps 20. Adamoli, 7:40-45. The closed carton is then
overwrapped with transparent film 50. Id. at 7:48—50. As seen in Figure 6,
transparent film 50 covers the entire carton. Id. at Fig. 6; see also id. at
8:65—66 (“transparent overwrap 50 overwrapping all”). With this
arrangement, when film 50 overwraps the carton, the carton is not operable
in the sense that it cannot be opened to remove the product. But when
film 50 is removed (i.e., activating the revealing mechanism), the carton
becomes operable in the sense that it can be opened to remove the product.
Accordingly, Adamoli discloses the claim 9 limitation “wherein said
activation allows said at least one object to be operable such that without
activation said object is not operable.”
Appellants make an argument similar to the argument asserted against
the rejection based on Hoffer. That is, Appellants argue that Adamoli also is
“directed toward tamper notification indicating that an object has been
tampered with.” Appeal Br. 6 (citing Adamoli, Abstract, 3:45—49).
According to Appellants, such a tamper notification is a disincentive for
making an object operable and, therefore, does not teach the claim 9
limitation of activation allowing an object to be operable. Id.
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We find this argument unpersuasive for reasons similar to those
discussed above in connection with Hoffer. Namely, we disagree that
Adamoli’s tamper notification function is a disincentive to open the carton
and make it operable. As with the Hoffer package, the intended recipient of
Adamoli’s carton would be incentivized to open the carton to access the
product therein, despite the tamper notification. Furthermore, claim 9 does
not recite an incentive to make an object operable. Rather, claim 9 merely
recites that activation of the revealing mechanism “allows said at least one
object to be operable such that without activation said object is not
operable.” Adamoli discloses this limitation because, as discussed above,
removing Adamoli’s transparent film 50 (i.e., activating the revealing
mechanism) allows the carton to be operable, but the carton is not operable,
at least in this sense, without removal of transparent film 50.
In view of the above, Appellants’ arguments do not apprise us of
error, and we sustain the rejection of claim 9 as anticipated by Adamoli. We
also sustain the rejection of claim 17, which depends from claim 9 and for
which Appellants do not advance any separate argument. See Appeal Br. 7.
Because our reasoning differs from that of the Examiner, however, we
designate our affirmance of the rejection of claims 9 and 17 as a “new
ground” so as to afford Appellants a fair opportunity to respond. Leithem,
661 F.3d at 1320.
Rejection III
The Examiner finds that Fiala discloses “providing a covert label
having a preconfigured pattern (PIN number) 1.32 applied to an object
(activation card) 1.78 and coupling a revealing mechanism 1.82 (Fig. 13).”
Final Act. 5. The Examiner also finds that Fiala does not disclose
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irreversibly revealing the preconfigured pattern by removing ink based on
the preconfigured pattern. Id. at 6. Instead, the Examiner finds that Smits
discloses
a similar invention comprising coupling a covert label to an
object 41 and a revealing mechanism 44 (Fig. 3), wherein an ink
layer (thin film) 42 is treated with an adhesion-reducing agent
coated in a preconfigured pattern, wherein upon delamination, a
preconfigured pattern is irreversibly revealed (the ink layer is
removed in areas outside the adhesion-reducing agent by the
revealing mechanism) (Col. 8, 3—12)[,]
and concludes that it would have been obvious to one of ordinary skill in the
art to substitute Fiala’s simple peel-off label with the mechanism taught by
Smits. Id.
The Examiner’s position, however, is based on the erroneous finding
that thin film 42 of Smits is an “ink layer.” Smits discloses a laminated
tamper-evident structure having “at least two layers capable of generating a
color by a light interference and absorption phenomenon” wherein the
generated color is irreversibly lost when the layers are peeled apart. Smits,
Abstract. In the embodiment relied on by the Examiner, the tamper-evident
structure comprises flat substrate 41, metal layer 40, thin film 42 of a light
transmitting material, and overlying strip 44. Id. at 11:12—19, Fig. 3. The
color generated by this structure is eliminated when layers 40 and 42 are
completely separated. Id. at 11:38—39.
To support the finding that thin film 42 is an “ink layer,” the
Examiner states that Smits discloses that “a wide variety of materials may be
used” in forming the thin layer, “which allows characterization of the
formed film as an ink.” Final Act. 6 (citing Smits, 5:61—6:14). The passage
of Smits cited by the Examiner, however, states that “[t]he material used to
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form the thin film overlying the metal layer can be any light transmitting
layer having adequate transparency’'' and does not state expressly using ink.
Smits, 5:61—6:14 (emphasis added). Thus, the Examiner has not explained
sufficiently how Smits explicitly or implicitly discloses using ink in the thin
film. The mere fact that a variety of materials are disclosed does not mean
that ink was contemplated by Smits. Indeed, Smits’ disclosure of the thin
film being a light transmitting material having adequate transparency tends
to suggest that ink would not be contemplated for this film.
For the above reason, we do not sustain the rejection of claim 18, and
claims 19 and 20 depending therefrom, as unpatentable over Fiala and Smits
DECISION
We affirm the decision of the Examiner rejecting claims 1—17 and
designate our affirmance as NEW GROUNDS OF REJECTION.
We reverse the decision of the Examiner rejecting claims 18—20.
This decision contains new grounds of rejection pursuant to 37 C.F.R.
§ 41.50(b) (2011). 37 C.F.R. § 41.50(b) provides “[a] new ground of
rejection pursuant to this paragraph shall not be considered final for judicial
review.”
37 C.F.R. § 41.50(b) also provides that Appellants, WITHIN TWO
MONTHS FROM THE DATE OF THE DECISION, must exercise one of
the following two options with respect to the new grounds of rejection to
avoid termination of the appeal as to the rejected claims:
(1) Reopen prosecution. Submit an appropriate
amendment of the claims so rejected or new evidence
relating to the claims so rejected, or both, and have the
matter reconsidered by the Examiner, in which event the
proceeding will be remanded to the Examiner. . . .
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(2) Request rehearing. Request that the proceeding
be reheard under §41.52 by the Board upon the same
record. .. .
No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. § 1.136(a). See 37 C.F.R.
§ 1.136(a)(l)(iv).
AFFIRMED-IN-PART, 37 C.F.R. § 41.50(b)
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