Ex Parte Foresti et al

Patent Trial and Appeal BoardApr 12, 2016

12294297 (P.T.A.B. Apr. 12, 2016)

UNITED STA TES p A TENT AND TRADEMARK OFFICE APPLICATION NO. FILING DATE 12/294,297 09/24/2008 28075 7590 04/14/2016 SEAGER, TUFTE & WICKHEM, LLP 100 SOUTH 5TH STREET SUITE 600 MINNEAPOLIS, MN 55402 FIRST NAMED INVENTOR Jean-Francois Foresti 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 ATTORNEY DOCKET NO. CONFIRMATION NO. 1322.1140101 8487 EXAMINER BANH, DAVID H ART UNIT PAPER NUMBER 2854 NOTIFICATION DATE DELIVERY MODE 04/14/2016 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): GEN.USPTO@stwiplaw.com PTOL-90A (Rev. 04/07) UNITED STATES PATENT AND TRADEMARK OFFICE BEFORE THE PATENT TRIAL AND APPEAL BOARD Ex parte JEAN-FRANCOIS FOREST!, JOHANNES GEORG SCHAEDE, and VINCENT MOREAU Appeal2014-009077 Application 12/294,297 Technology Center 2800 Before ST. JOHN COURTENAY III, KRISTEN L. DROESCH, and MONICA S. ULLAGADDI, Administrative Patent Judges. COURTENAY, Administrative Patent Judge. DECISION ON APPEAL STATEMENT OF THE CASE This is an appeal under 35 U.S.C. Â§ 134(a) from the Examiner's Final Rejection of claims 1-16 and 21-23. Claims 17-20 are cancelled. We have jurisdiction under 35 U.S.C. Â§ 6(b ). We affirm. Appeal2014-009077 Application 12/294,297 Invention The invention on appeal "relates to a process for producing security papers, especially banknotes, to an intaglio printing press for implementing such process, and to a security paper produced according to such a process." (Spec. 1). Representative Claim 1. A process for producing security papers, in particular banknotes, comprising the step of sealing the surface of the security papers by applying a protective pattern on the surface of the security papers, wherein the step of sealing the surface of the security papers comprises printing the security papers by intaglio printing using an intaglio printing plate with engraved areas such that at least 80% of the whole surface of each security paper is covered with embossed intaglio patterns produced by engraved areas of the intaglio printing plate which are inked or with a combination of embossed intaglio patterns and flat intaglio patterns, which flat intaglio patterns are produced by unengraved areas of the intaglio printing plate which are inked after wiping of the intaglio printing plate, at least a part of the embossed intaglio patterns and/or flat intaglio patterns being printed with a transparent or semi-transparent intaglio ink. (Emphasis added with respect to the contested pattern coverage limitation). Rejections A. Claims 1-7, and 9 are rejected as being obvious under 35 U.S.C. Â§ 103(a) over the combined teachings and suggestions of Schaede (U.S. 2003/0010233 Al; Jan. 16, 2003) and Adamczyk (U.S. 2004/0050269 Al; Mar. 18, 2004 ). 2 Appeal2014-009077 Application 12/294,297 B. Claims 1, 10-16, and 21-23 are rejected as being obvious under 35 U.S.C. Â§ 103(a) over the combined teachings and suggestions of Schaede and Andric (U.S. 5,449,200; Sept. 12, 1995). C. Claim 8 is rejected under 35 U.S.C. Â§ 103(a) as being obvious over the combined teachings and suggestions of Schaede, Adamczyk, and Hutton (U.S. 4,033,059; July 5, 1977). Grouping of Claims Based on Appellants' arguments, we decide the appeal of rejection A of claims 1-7 and 9 on the basis of representative claim 1. Also based upon Appellants' arguments, we decide the appeal of rejection B of claims 1, 10-16, and 21-23 on the basis of representative claim 1. 1 We address remaining claim 8 rejected under rejection C, infra. See 37 C.F.R. Â§ 41.37(c)(l)(iv). ANALYSIS Rejection A of Claims 1-7 and 9 underÂ§ 103 Issue: Did the Examiner err in finding the combination of Schaede and Adamczyk would have taught or suggested "printing the security papers by intaglio printing using an intaglio printing plate with engraved areas such that at least 80% of the whole surface of each security paper is covered with embossed intaglio patterns," within the meaning of claim 1? In finding Schaede principally teaches or suggests the foregoing contested limitation, the Examiner construes the term "pattern" as something 1 The Examiner cumulatively rejects claim 1 under both Rejections A and B. (Final Act. 2-3, 6-7). 3 Appeal2014-009077 Application 12/294,297 that "includes both ink and non-inked portions." (Ans. 3). Thus, according to the Examiner, Schaede teaches an intaglio printing plate that covers the entire paper with both ink and non-inked portions, i.e., "the screen printer 7 covers the paper portions corresponding to flat portions of the plate with screen printing ink, while the engraved portions receive gravure ink from cylinder 6." (Final Act. 2, referring the Schaede, Fig. 1 ). Appellants contend Schaede fails to teach 80% pattern coverage, and also assert the Examiner's claim interpretation is overly broad: The claim requires that the pattern( s) on which the Examiner has focused his rejection are produced by engraved areas which are inked and/or unengraved areas which are inked. One of ordinary skill in the art would recognize that the pattern(s) is formed by the ink, and thus the pattern(s) necessarily corresponds to ink coverage of the surface of the security paper. (App. Br. 8) (emphasis added). "In the patentability context, claims are to be given their broadest reasonable interpretations ... [however] limitations are not to be read into the claims from the specification." In re Van Geuns, 988 F.2d 1181, 1184 (Fed. Cir. 1993) (citations omitted). Here, Appellants urge the claimed ''pattern(s) necessarily corresponds to ink coverage of the surface of the security paper" (App. Br. 8, emphasis added). However, Appellants claim 1 is silent regarding the argued "ink coverage of the surface of the security paper." We decline Appellants' invitation to read argued (but unclaimed) limitations into the claim. We conclude the Examiner's broader interpretation of "embossed intaglio patterns" is reasonable, because we find the blank or negative space around and between the inked lines, curves, and other inked portions of a 4 Appeal2014-009077 Application 12/294,297 , , â€¢ ' .. ' '.. ' ' ,., â€¢ .. .. ' .. ' â€¢ ' ' .. r- â€¢ ' â€¢ â€¢ pattern are mtegra1 to tne pattern.~ Appellants ao not pomt to a aenmuon m the Specification that precludes the Examiner's broader reading of "patterns," nor have Appellants submitted any rebuttal evidence in support of their assertion regarding how the term would have been understood by an artisan having ordinary skill in the art, at the time of the invention. (See App. Br. 8). Because "applicants may amend claims to narrow their scope, a broad construction during prosecution creates no unfairness to the applicant or patentee." In re ICON Health and Fitness, Inc., 496 F.3d 1374, 1379 (Fed. Cir. 2007) (citation omitted). Because Appellant has not provided an explicit definition in the Specification, or rebuttal evidence in the record, we are not persuaded the Examiner's broader reading of the claim term "pattern" is overly broad or unreasonable. Therefore, on this record, we find a preponderance of the evidence supports the Examiner's underlying factual findings and ultimate legal conclusion of obviousness regarding independent claim 1. Because Appellant has not persuaded us the Examiner erred, we sustain rejection A of representative claim 1. Grouped claims 2-7 and 9, also rejected under rejection A, fall with claim 1. See Grouping of Claims, supra. RejectionB of Claims 1, 10--16, and 21-23underÂ§103 Similar to rejection A of claim 1, under rejection B, the Examiner again relies on Schaede as a primary reference for principally teaching or 2 The Examiner's yin-and-yang example is illustrative of this point. (See Final Act. 12 ("a yin-yang symbol, for example, has exactly 50% ink coverage, but 100% pattern coverage" with respect to the circle)). 5 Appeal2014-009077 Application 12/294,297 ' â€¢ '.. ' ' .... â€¢ â€¢' ' â€¢ ro .. â€¢ -1 1. "- .. .. ' .. ' .. suggestmg me comestea imutauon or ciam1 1. J Appeuams ao not aavance separate, substantive arguments, and/or supporting evidence demonstrating error regarding the Examiner's rejection B of claim 1, over the combined teachings and suggestions of Schaede, and Andric. See App. Br. 10 ("[ fJor at least the reasons discussed above at A, Schaede fails to disclose or suggest all of the limitations of claim 1 and mutatis mutandis, independent claim 21 "). Therefore, we sustain the Examiner's rejection B of claim 1 for essentially the same reasons discussed above regarding rejection A of claim 1. Grouped claims 10-16 and 21-23, also rejected under rejection B, fall with claim 1. See Grouping of Claims, supra. Rejection C of Claim 8 Appellants do not advance separate, substantive arguments and/or evidence demonstrating error regarding the Examiner's rejection C of claim 8. (App. Br. 12). Therefore, we sustain the Examiner's rejection C of dependent claim 8. Reply Brief To the extent Appellants may advance new arguments in the Reply Brief not in response to a shift in the Examiner's position in the Answer, we note arguments raised in a Reply Brief that were not raised in the Appeal Brief or are not responsive to arguments raised in the Examiner's Answer will not be considered except for good cause. See 37 C.F.R. Â§ 41.41(b)(2). 3 See n.1 supra. 6 Appeal2014-009077 Application 12/294,297 Conclusion For at least the aforementioned reasons, on this record, we are not persuaded the Examiner erred. We find a preponderance of the evidence supports the Examiner's underlying factual findings and ultimate legal conclusion of obviousness for all claims on appeal. DECISION We affirm the Examiner's rejections of claims 1-16 and 21-23 under Â§ 103(a). No time for taking any action connected with this appeal may be extended under 37 C.F.R. Â§ 1.136(a)(l). See 37 C.F.R. Â§ 41.50(Â±). AFFIRMED 7