Ex Parte Hill

Patent Trial and Appeal Board

Jan 13, 2017

12854595 (P.T.A.B. Jan. 13, 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.
12/854,595 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;
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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
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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
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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
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