Ex Parte Gremaud et al

Patent Trial and Appeal BoardMay 20, 2016

13234633 (P.T.A.B. May. 20, 2016)

UNITED STA TES p A TENT AND TRADEMARK OFFICE APPLICATION NO. FILING DATE 13/234,633 09/16/2011 7055 7590 05/24/2016 GREENBLUM & BERNSTEIN, PLC 1950 ROLAND CLARKE PLACE RESTON, VA 20191 FIRST NAMED INVENTOR Frederic GREMAUD 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. P40617 2596 EXAMINER PERREAULT, ANDREW D ART UNIT PAPER NUMBER 3788 NOTIFICATION DATE DELIVERY MODE 05/24/2016 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): gbpatent@gbpatent.com greenblum.bernsteinplc@gmail.com PTOL-90A (Rev. 04/07) UNITED STATES PATENT AND TRADEMARK OFFICE BEFORE THE PATENT TRIAL AND APPEAL BOARD Ex parte FREDERIC GREMAUD, XAVIER SCHWAB, and ERIC DECOUX Appeal2014-004799 Application 13/234,633 Technology Center 3700 Before JENNIFER D. BAHR, MICHAEL W. KIM, and ARTHUR M. PESLAK, Administrative Patent Judges. BAHR, Administrative Patent Judge. DECISION ON APPEAL STATEMENT OF THE CASE Frederic Gremaud et al. (Appellants) appeal under 35 U.S.C. Â§ 134(a) from the Examiner's decision rejecting claims 1, 3, 4, 6-19, 21-23, and 25, which are the only pending claims. We have jurisdiction under 35 U.S.C. Â§ 6(b ). We REVERSE. Appeal2014-004799 Application 13/234,633 THE CLAIMED SUBJECT MATTER Claim 1, reproduced below with emphasis added, is illustrative of the claimed subject matter. 1. A tamperproof case containing a genuine article, wherein the case comprises a first sheet member and a second sheet member forming a space therebetween containing the article, the first sheet member and the second sheet member are permanently bonded together in at least an area that substantially completely surrounds the space, and wherein at least one security element that is invisible under light, wherein the light is in a visible wavelength range, and visible at wavelengths outside the visible wavelength range, and the at least one security element is present in the area in which the first and second sheet members are permanently bonded together. REJECTIONS I. Claims 1, 6, 8-14, 21, and 22 stand rejected under 35 U.S.C. Â§ 102(b) as anticipated by Benardelli (US 5,033,774, iss. July 23, 1991 ). II. Claims 3 and 4 stand rejected under 35 U.S.C. Â§ 103(a) as unpatentable over Benardelli and Neuman (AU-B-48027 /90, pub. Aug. 1, 1990). 1 III. Claim 7 stands rejected under 35 U.S.C. Â§ 103(a) as unpatentable over Benardelli and Demartin Maeder (US 2008/0241492 Al, pub. Oct. 2, 2008). IV. Claims 15-19 stand rejected under 35 U.S.C. Â§ 103(a) as unpatentable over Benardelli and Boyd (US 5,011,005, iss. Apr. 30, 1991). 1 Equivalent of WO 90/07288, pub. July 12, 1990. 2 Appeal2014-004799 Application 13/234,633 V. Claims 23 and 25 stand rejected under 35 U.S.C. Â§ 103(a) as unpatentable over McDowell (US 2006/0102495 Al, pub. May 18, 2006) and Benardelli. DISCUSSION An issue raised in this appeal is whether Benardelli discloses the following limitation of independent claims 1, 21, and 22: at least one security element that is invisible under light, wherein the light is in a visible wavelength range, and visible at wavelengths outside the visible wavelength range and the at least one security element is present in the area in which the first and second sheet members are permanently bonded together. Appeal Br. 25, 27 (Claims App.); see id. at 11-15. The Examiner found that Benardelli discloses such a security element. Final Act. 2 ("security element (5, 5'; UV and pattern in col. 6: 61-col. 7:10[)]"). According to the Examiner, Benardelli's hologram 5, or multi-ink layer 5', which is present in the area of the bond (transparent adhesive 11 ), includes an invisible code that is readable only under ultraviolet light. Ans. 7-8 (citing Benardelli, col. 5, 11. 34-50; col. 6, 1. 61-col. 7, 1. 10). Appellants contest the Examiner's findings, and submit that Benardelli discloses two different types of invisible elements, neither of which is both visible at wavelengths outside the visible wavelength range and present in the area in which the first and second sheet members are bonded together, as called for in claims 1, 21, and 22. Reply Br. 2-6. The first type is an invisible holographic optical code that can be incorporated in hologram 5 but is only detectable in monochromatic laser light of unspecified wavelength. Reply Br. 3. According to Appellants, this first type of optical code does not satisfy the claim requirement of being visible at 3 Appeal2014-004799 Application 13/234,633 wavelengths outside the visible wavelength range. Id. The second invisible element is an optical code with an invisible ink that is readable under ultraviolet light but, according to Appellants, is not present in the area in which the first and second sheet members are bonded together, as called for in claims 1, 21, and 22. Reply Br. 3-6. Appellants submit that Benardelli, at most, discloses that this second invisible optical code is "somehow associated with the holographic code" but never explicitly discloses that the second optical code is "present in a permanent bond area of Benardelli." Reply Br. 3-4. For the reasons that follow, we agree with Appellants. As discussed above, Benardelli discloses two types of invisible security elements. An invisible holographic optical code can be incorporated in the hologram, which is only detectable in monochromatic laser light. Furthermore, an optical code with an invisible ink, and which is readable under ultraviolet light and which is delaminable, can be applied to the case, also in combination with the holographic code. Benardelli, col. 5, 11. 42--48. Benardelli further explains that "optical code 16 with invisible ink and readable under ultraviolet light may be associated with the delaminable printing pattern." Id., col. 6, 1. 67-col. 7, 1. 2 (boldface omitted). Figure 1 of Benardelli depicts optical code 16 located in the central area of upper element 1 covering open space 10, and not in the peripheral area in which hologram 5, upper element 1, and lower element 2 are bonded together by adhesive 11. See id., Figs. 1-3, col. 7, 11. 5-37. Benardelli does not describe or depict optical code 16 in any other location. Benardelli discloses an alternative embodiment in which a decorative multi-ink layer 5' replaces hologram 5. Id., col. 7, 11. 45-65; Fig. 4. According to Benardelli, the 4 Appeal2014-004799 Application 13/234,633 decorative multi-ink layer is adhered to the first and second elements (elements 1 and 2), includes a security printing pattern and, further, "is associated with an optical code with an ink which is invisible in white light but readable in ultraviolet light." Id., col. 8, 11. 14-39, 53-57 (claims 1 and 6) (emphasis added). The Examiner's finding that Benardelli discloses a security element that is both visible at wavelengths outside the visible wavelength range and present in the area in which the first and second sheet members are bonded together, as called for in claims 1, 21, and 22, is predicated on the Examiner's finding that the optical code described by Benardelli as readable only in ultraviolet light is part of hologram 5 or multi-ink layer 5', which is located in the bonded area. The problem with the Examiner's finding is that Benardelli does not unambiguously disclose that the optical code described as readable in ultraviolet light is part of the hologram or multi-ink layer or that it is located in the bonding area with the hologram or multi-ink layer. Benardelli's description of the code readable in ultraviolet light as applied "in combination with" or "associated with" the hologram or multi-ink layer, as discussed above, is simply too vague and ambiguous, especially when considered in light of Benardelli's sole depiction of such optical code 16 in a location different from hologram 5 and not in the bond area, to support the Examiner's anticipation finding by a preponderance of the evidence. "It is well established that an anticipation rejection cannot be predicated on an ambiguous reference. Rather, disclosures in a reference relied on to prove anticipation must be so clear and explicit that those skilled in the art will have no difficulty in ascertaining their meaning." In re Turlay, 304 F.2d 893, 899 (CCPA 1962). 5 Appeal2014-004799 Application 13/234,633 Accordingly, we do not sustain the rejection of claims 1, 21, and 22, or claims 6 and 8-14, which depend from claim 1, under 35 U.S.C. Â§ 102(b) as anticipated by Benardelli. Rejections II-IV Claims 3, 4, 7, and 15-19 depend, either directly or indirectly, from claim 1, and, thus, also incorporate the "at least one security element that is invisible under light ... in a visible wavelength range, and visible at wavelengths outside the visible wavelength range and ... is present in the area in which the first and second sheet members are permanently bonded together" limitation of claim 1. See Appeal Br. 25-27 (Claims App.). In rejecting these claims, the Examiner does not articulate any findings or reasoning or rely on any teachings in Neuman, Demartin Maeder, or Boyd that would remedy the aforementioned deficiency in the Examiner's findings with respect to Benardelli. Thus, we do not sustain the rejections of claims 3, 4, 7, and 15-19 under 35 U.S.C. Â§ 103(a). Rejection V Independent claim 23 is directed to "[a]tamperproofbag" and requires "at least one security element that is invisible under light ... in a visible wavelength range, and visible at wavelengths outside the visible wavelength range, and ... is present in an area in which an opening of the bag is permanently sealed or sealable." Appeal Br. 28 (Claims App). The Examiner's unsupported finding with respect to the location of the optical code readable in ultraviolet light in Benardelli, discussed above in connection with the rejection of independent claims 1, 21, and 22, fatally taints the Examiner's rejection of claim 23 and claim 25, which depends from claim 23. See Final Act. 5-6. Thus, for similar reasons, we do not 6 Appeal2014-004799 Application 13/234,633 sustain the rejection of claims 23 and 25 under 35 U.S.C. Â§ 103(a) as unpatentable over McDowell and Benardelli. DECISION The Examiner's decision rejecting claims 1, 6, 8-14, 21, and 22 under 35 U.S.C. Â§ 102(b) as anticipated by Benardelli is REVERSED. The Examiner's decision rejecting claims 3 and 4 under 35 U.S.C. Â§ 103(a) as unpatentable over Benardelli and Neuman is REVERSED. The Examiner's decision rejecting claim 7 under 35 U.S.C. Â§ 103(a) as unpatentable over Benardelli and Demartin Maeder is REVERSED. The Examiner's decision rejecting claims 15-19 under 35 U.S.C. Â§ 103(a) as unpatentable over Benardelli and Boyd is REVERSED. The Examiner's decision rejecting claims 23 and 25 under 35 U.S.C. Â§ 103(a) as unpatentable over McDowell and Benardelli is REVERSED. REVERSED 7