Ex Parte Eschbach et al

Patent Trial and Appeal BoardMar 20, 2017

12546848 (P.T.A.B. Mar. 20, 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. 12/546,848 08/25/2009 Reiner Eschbach 20090054USNP/106681.26501 4153 75313 7590 03/22/2017 YKROY TORPOR ATTON T/O FONT ROTHSOHTT D T T P EXAMINER Princeton Pike Corporate Center POLLEY, CHRISTOPHER M 997 Lenox Drive, Building 3 Princeton, NJ 08648-2311 ART UNIT PAPER NUMBER 1785 NOTIFICATION DATE DELIVERY MODE 03/22/2017 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): ipdocket @ foxrothschild. com PTOL-90A (Rev. 04/07) UNITED STATES PATENT AND TRADEMARK OFFICE BEFORE THE PATENT TRIAL AND APPEAL BOARD Ex parte REINER ESCHBACH, MARTIN S. MALTZ, RAJA BALA, and YONGHUI ZHAO Appeal 2016-0010731 Application 12/546,848 Technology Center 1700 Before BEVERLY A. FRANKLIN, LINDA M. GAUDETTE, and RICHARD M. LEBOVITZ, Administrative Patent Judges. LEBOVITZ, Administrative Patent Judge. DECISION ON APPEAL This appeal involves claims directed to a document comprising first and second colorant mixtures. The Examiner rejected the claims as obvious under 35 U.S.C. § 103(a). We have jurisdiction under 35 U.S.C. § 134. The rejections are reversed. 1 The Appeal Brief (“Appeal Br.”) 3 lists Xerox Corporation as the real- party-in-interest. Appeal 2016-001073 Application 12/546,848 STATEMENT OF CASE Claims 1, 2, 4—9, 13—17, 19, and 28—32 stand rejected by the Examiner as follows: 1. Claims 1—5, 8, 9, 13, 14, 17, and 28—32 under pre-AIA 35 U.S.C. § 103(a) as obvious in view of Morgan (US Pat. App. Pub. 2007/0268341 Al, publ. Nov. 22, 2007). FinalRej.2. 2. Claims 6 and 15 under pre-AIA 35 U.S.C. § 103(a) as obvious in view of Morgan and Simske (US Pat. App. Pub. 2007/0256136 Al, publ. Nov. 1,2007). Final Rej. 8. 3. Claims 7 and 16 under pre-AIA 35 U.S.C. § 103(a) as obvious in view of Morgan and Brennan (US Pat. App. Pub. 2004/0170912 Al, publ. Sept. 2, 2004). Final Rej. 10. There are two independent claims 1 and 13. Claim 1, which is representative, is reproduced below: 1. A document, comprising a non-magnetic substrate; a first colorant mixture printed as a first repeating distraction pattern comprising a first colorant combination in mosaic combination with a second colorant combination upon the substrate, the first colorant mixture further comprising a magnetic ink; and a second colorant mixture printed as a second repeating distraction pattern comprising a third colorant combination in mosaic combination with a fourth colorant combination upon the substrate in substantially close spatial proximity to the printed first colorant mixture, wherein the second colorant mixture consists essentially of one or more non-magnetic inks and exhibits properties of both low visual contrast and high magnetic contrast against the first colorant mixture, such that the resultant printed substrate does not reveal the first repeating distraction pattern to the 2 Appeal 2016-001073 Application 12/546,848 human eye, but will reveal the first repeating distraction pattern to a magnetic image reader. REJECTIONS Claim 1 is directed to a document comprising: 1) a non-magnetic substrate; 2) a first colorant mixture comprising a magnetic ink; and 3) a second colorant mixture comprising a non-magnetic ink. Each colorant mixture is printed as a “repeating distraction pattern.” Each colorant mixture has two colorant combinations “in mosaic combination” with each other. Independent claim 13 has the same requirements. The Specification explains that a distraction pattern “will act as a distraction to the eye and make it more difficult to discern the swapping between text/image and background.” Spec. 146. Examples disclosed in the Specification of such a pattern is of a simple orthogonal checkerboard, or polka-dots. Id. However, the Specification teaches that other patterns may be selected, and the “distraction pattern granularity size is somewhat variable, flexible and empirical.” Id. The Specification does not expressly define what two colorants “in mosaic combination” with each other means. However, Fig. 4 shows colorant patterns 401 and 402 as diamond checkerboard patterns which the Specification characterizes as mosaic combinations. Id., 145. This example is consistent with the plain meaning of the term “mosaic” to be a “picture or pattern produced by arranging together small pieces of stone, tile, glass, etc.,” or other elements.2 Thus, we interpret two colorants “in mosaic 2 https://en.oxforddictionaries.com/defmition/mosaic. Accessed Feb. 21, 2017. 3 Appeal 2016-001073 Application 12/546,848 combination” with each other to mean that small pieces of colorant elements of the colorant combinations are arranged in a pattern together. The Specification teaches that the mosaic can also serve as the distraction pattern as it does in Fig, 4 of the Specification, Id., f 46. The Examiner found that Morgan describes a substrate with a printed element having 3) a second colorant mixture comprising a non-magnetic ink. Final Rej. 3. The Examiner found that Morgan teaches a 2) a first colorant comprising a magnetic ink (“a toner”), but determined: It would have been obvious to use a combination of magnetic toners [two colorant combinations] . . . since in one of the embodiments in paragraph 42, multiple layers of magnetic toner or no- magnetic toner are printed with 3 magnetic toners to produce an image as seen in figure 8. Id. Appellants contend that Morgan does not teach or suggest the claim 1 elements of a first colorant mixture printed as a first distraction pattern comprising a first colorant combination in mosaic combination with a second colorant combination, and a second colorant mixture printed as a second distraction pattern comprising a third colorant combination in mosaic combination with a fourth colorant combination. Appeal Br. 11, 13; Reply Br. 5, 7. Discussion The Examiner did not provide adequate evidence that Morgan teaches or suggests each colorant mixture comprising two colorant combinations “in mosaic combination” with each other. Figure 6 of Morgan illustrates this deficiency: 4 Appeal 2016-001073 Application 12/546,848 Fig. 6, reproduced above, shows 2) a first colorant mixture comprising a magnetic ink (“602 (MAGNETIC TONER)”) and 3) a second colorant mixture comprising a non-magnetic ink (“600 (NON-MAGNETIC TONER)”) as required by the claims. Each of 600 and 602 can be characterized as a “repeating distraction pattern” as recited in the claims because each comprises parallel rectangles which are repeated in a pattern. 600 has two repeated rectangles; 602 has three repeated rectangles. The claims further require that each of the two colorant mixtures — first colorant mixture 602 comprising a magnetic ink and second colorant mixture 600 comprising a non-magnetic ink — comprises two colorant combinations “in mosaic combination” with each other. (For the first colorant mixture: “a first colorant combination in mosaic combination with a second colorant combination upon the substrate”; for the second colorant mixture: “a third colorant combination in mosaic combination with a fourth colorant combination upon the substrate.”) While the Examiner provided evidence that Morgan teaches that each colorant mixture comprises at least two colorant combinations (Ans. 3), the 5 Appeal 2016-001073 Application 12/546,848 Examiner did not establish that Morgan teaches or suggests that the two colorant combinations form a mosaic pattern as required by the claims {id., 4). Fig. 6, for example, shows a distraction pattern comprising two or more rectangles for each of the magnetic and non-magnetic toners, but it does not show either pattern as a mosaic of two colorant combinations in combination with each other. The Examiner did not provide a reason for arranging the colorants in a mosaic combination. Figs. 8 and 9 show other configurations of the magnetic and non magnetic toners, but neither figure nor its description, show the claimed mosaic combination of colorants. For the foregoing reason, we reverse Rejection 1. Neither Simske nor Brennan is cited by the Examiner as teaching or suggesting a mosaic of colorant elements. Consequently, Rejections 2 and 3 based on these publications are reversed. REVERSED 6