Ex Parte HillDownload PDFPatent Trial and Appeal BoardJan 13, 201712854595 (P.T.A.B. Jan. 13, 2017) Copy Citation 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. 12/854,595 08/11/2010 DEAN R. HILL 200007-01110-1 8122 3705 7590 01/18/2017 ECKERT SEAMANS CHERIN & MELLOTT, LLC 600 GRANT STREET 44TH FLOOR PITTSBURGH, PA 15219 EXAMINER LEWIS, JUSTIN V ART UNIT PAPER NUMBER 3725 NOTIFICATION DATE DELIVERY MODE 01/18/2017 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): ipmail @ eckertseamans. com PTOL-90A (Rev. 04/07) UNITED STATES PATENT AND TRADEMARK OFFICE BEFORE THE PATENT TRIAL AND APPEAL BOARD Ex parte DEAN R. HILL Appeal 2015-003081 Application 12/854,595 Technology Center 3700 Before ANNETTE R. REIMERS, JEFFREY A. STEPHENS, and BRENT M. DOUGAL, Administrative Patent Judges. DOUGAL, Administrative Patent Judge. DECISION ON APPEAL STATEMENT OF THE CASE Appellant appeals under 35U.S.C. § 134 from a final rejection of claims 12, 14, 16—22, and 24—29 under 35 U.S.C. § 103(a) as being unpatentable over Peters (US 2009/0072526 Al, pub. Mar. 19, 2009) and Barnes (US 4,270,774, iss. June 2, 1981). We have jurisdiction under 35 U.S.C. § 6(b). We reverse. Appeal 2015-003081 Application 12/854,595 CLAIMED SUBJECT MATTER The claims are directed to an optically variable security device and method for verifying the authenticity of the same. Claims 12 and 21 are independent. Claim 12, reproduced below, is illustrative of the claimed subject matter: 12. A method for verifying the authenticity of an article, comprising the steps of: providing a production master plate being structured to produce from one impression a plurality of security devices, each having a different optically variable security code; producing a plurality of security devices from the impression of the production master plate, each of said plurality of security devices comprising: an optically variable security code different from optically variable security codes of others of the plurality of security devices produced from the impression of the production master plate, the optically variable security code comprising a plurality of individual elements, including a first element and a second element, wherein at a first predetermined observation point the first element is visible and the second element is not visible, and at a second predetermined observation point the second element is visible and the first element is not visible; and a unique serial number, the unique serial number being disposed on a first portion of a corresponding one of the plurality of security devices and the optically variable security code being disposed on a second portion of the corresponding security device, providing a first security device from the plurality of security devices for affixing to an article; recording the associated security code and serial number of the first security device in a database; receiving an authentication request from a user of the article; 2 Appeal 2015-003081 Application 12/854,595 sending an authentication report to the user; wherein the authentication report informs the user whether authentication is confirmed; and wherein authentication is confirmed if the security code and the unique serial number on the device-affixed article is the same as an associated security code and serial number recorded in the database. OPINION The Examiner finds that Peters teaches all of the features of independent claims 12 and 21, except: i) providing a production master plate being structured to produce from one impression a plurality of security devices, each having a different optically variable security code; ii) producing a plurality of security devices from the impression of the production master plate; and iii) each optically variable security code being different from optically variable security codes of others of the plurality of security devices produced from the impression of the production master plate. Final Act. 4. The Examiner relies on the ticket making system of Barnes in combination with Peters’s security device to teach or suggest these features. Id. at 4—5. Appellant argues that: [Pointing “the alphanumeric indicia of the Peters security element 1 using a Barnes web/printing plate assembly” would result in the Peters security element having a feature that is the same at every tilt angle (i.e., not an optically variable security code). To create an optically variable security code, the Barnes web/printing plate assembly must be modified to perform a different function than printing images that do not appear to move. Appeal Br. 14 (footnote omitted). As noted by Appellant, “the Examiner has not addressed the substance of Appellant[’]s arguments at all and has not provided anything new in the 3 Appeal 2015-003081 Application 12/854,595 Answer .... [E]ach of the Examiner’s ‘responses’ in the Response to Argument section merely [repeats] the basis for rejection [from] the . . . final Office Action.” Reply Br. 1. Thus, the Examiner provides no response or further explanation as to how the prior art teaches or suggests all of the features of the claims. We agree with Appellant that the independent claims require more than merely “simultaneously producing a plurality of individualized articles,” e.g. tickets. Final Act. 4. Though the Examiner has shown how the prior art suggests how different serial numbers could be stamped on different items, the Examiner has not shown that the prior art teaches or suggests “providing a production master plate being structured to produce from one impression a plurality of security devices, each having a different optically variable security code” where the optically variable security code includes elements that are not always visible as required by claim 12, or as similarly required by claim 21. We also agree with Appellant that the Examiner has not shown that Peters teaches or suggests “recording the associated [optically variable] security code and serial number of the first security device in a database” as required by claim 12 or a system “wherein the authenticity of the article is verified when the security code and the serial number of the security device affixed to the article are found together in the database of valid security code and serial number combinations” as required by claim 21. The Examiner points to Peters’s teachings concerning recording the serial number and certain other information, none of which appears to be related to the “tilt image” of Peters, which the Examiner relies on for 4 Appeal 2015-003081 Application 12/854,595 teaching the claimed “optically variable security code.” See Final Act. 3 (citing Peters 13, 43). For these reasons, we do not sustain the Examiner’s rejections of independent claims 12 and 21. For these same reasons, we do not sustain the Examiner’s rejections of claims 14, 16—20, 22, and 24—29 which depend from one of claims 12 and 21. DECISION The Examiner’s rejection of claims 12, 14, 16—22, and 24—29 is reversed. REVERSED 5 Copy with citationCopy as parenthetical citation