Ex Parte Lefebvre et al

Patent Trial and Appeal BoardApr 25, 2018

13397069 (P.T.A.B. Apr. 25, 2018)

UNITED STA TES p A TENT AND TRADEMARK OFFICE APPLICATION NO. FILING DATE 13/397,069 02/15/2012 60601 7590 04/25/2018 Muncy, Geissler, Olds & Lowe, P.C. 4000 Legato Road Suite 310 Fairfax, VA 22033 FIRST NAMED INVENTOR Olivier LEFEBVRE 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. 4303/0121PUS 1 6996 EXAMINER GROSS, ALEXANDER P ART UNIT PAPER NUMBER 2871 MAILDATE DELIVERY MODE 04/25/2018 PAPER 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. PTOL-90A (Rev. 04/07) UNITED STATES PATENT AND TRADEMARK OFFICE BEFORE THE PATENT TRIAL AND APPEAL BOARD Ex parte OLIVIER LEFEBVRE, PIERRE DEGOTT, RA YNALD DEMANGE, and NICOLAS PIETROLUNGO Appeal2017-006931 Application 13/397,069 Technology Center 2800 Before: LINDA M. GAUDETTE, N. WHITNEY WILSON, and MERRELL C. CASHION JR., Administrative Patent Judges. CASHION, Administrative Patent Judge. DECISION ON APPEAL STATEMENT OF CASE Appellants 1 appeal under 35 U.S.C. Â§ 134(a) from the Examiner's decision twice rejecting claims 1, 2, 6-12, 14--18, 36-39, and 42. Claim 3 has been cancelled. Claims 4, 5, 13, 19-35, 40, and 41 are withdrawn from consideration as being directed to non-elected subject matter. We have jurisdiction under 35 U.S.C. Â§ 6(b). We AFFIRM. 1 SICP A HOLDING SA is identified as the real party in interest. App. Br. 3. Appeal2017-006931 Application 13/397,069 The claimed invention is directed to an authentication device useful as security elements for the protection of banknotes and documents of value against counterfeiting wherein the device comprises, on at least one substrate or background, first and second ink layers/images of a pair of stereoscopic projections which together represent a graphical object exhibiting, when observed with appropriate viewing equipment, a three-dimensional appearance. Spec. 1, 3-5. The Specification discloses that the graphical object is composed of two or more separate building blocks, and within each of the stereoscopic projections, the building blocks forming the graphical object are represented such as to let the underlying background of said ink layers be apparent between the building blocks. Id. at 4. The Specification also describes that subdividing the graphical object into a plurality of separate building blocks allows overcoming limitations inherent to the described security features, giving clues to the brain to understand the volume of the represented object or of the represented scene comprising a plurality of objects. Id. at 6. Claim 1 illustrates the subject matter on appeal and is reproduced below: 1. An authentication device, wherein the device comprises arranged on one or more substrates first and second ink layers which together and when observed with appropriate viewing equipment represent a graphical object exhibiting a three-dimensional appearance, one of said ink layers being a left- handed circularly polarizing coating or comprising a left-handed circularly polarizing pigment and the other one of said ink layers being a right-handed circularly polarizing coating or comprising right-handed circularly polarizing pigment, wherein said first and second ink layers represent a first image and a second image 2 Appeal2017-006931 Application 13/397,069 of a pair of stereoscopic projections of said graphical object, each of the first and second ink layers comprises separate building blocks forming a corresponding stereoscopic projection, wherein the building blocks include building blocks that are completely separated from each other, and within each of the stereoscopic projections an underlying background of said ink layers is apparent between the building blocks. Appellants (App. Br. 8) request review of the following rejections from the Examiner's Non-Final Office Action, dated April 12, 2016 ("Non-Final Action" or "Non-Final Act."): I. Claims 1, 2, 6-12, 14, 15, 18, 36-39, and 42 rejected under 35 U.S.C. Â§ 103(a) as unpatentable over Kuntz et al. (US 2004/0058132 Al, published March 25, 2004) ("Kuntz") and Ostromoukhov et al. (US 6, 198,545 B 1, issued March 6, 2001) ("Ostromoukhov"). II. Claims 16 and 17 rejected under 35 U.S.C. Â§ 103(a) as unpatentable over the combined teachings of Ahlers et al. (US 2002/0117845 Al, published August 29, 2002) ("Ahlers"), Kuntz, and Ostromoukhov. For Rejection I, Appellants rely on essentially the same line of argument to address the patentability of claims 1, 2, 6-12, 14, 15, 18, 36-39, and 42. See generally App. Br. Appellants also rely on the arguments presented when discussing claim 1 to address the separate rejection of claims 16 and 17 (Rejection II). Id. at 18-19. Accordingly, we select claim 1 as representative of the subject matter before us for review on appeal and decide the appeal as to all grounds of rejections based on the arguments made by Appellants in support of patentability of claim 1. 3 Appeal2017-006931 Application 13/397,069 OPINION After review of the respective positions provided by Appellants in the Appeal and Reply Briefs and by the Examiner in the Non-Final Action and the Answer, we affirm the rejections of claims 1, 2, 6-12, 14--18, 36-39, and 42 under 35 U.S.C. Â§ 103(a) for the reasons presented by the Examiner. We add the following for emphasis. Claim 1 The Examiner finds, and Appellants do not dispute, that Kuntz discloses an authentication device that differs from the claimed invention in that Kuntz does not teach that each of the first and second ink layers/images comprises separate building blocks, wherein the building blocks include building blocks that are completely separated from each other with an underlying background apparent between the building blocks. Non-Final Act. 3--4; Kuntz i-fi-191-93 and Figures 1-2; see generally App. Br. The Examiner finds Ostromoukhov teaches the use of a graphical object made of separate building blocks wherein the building blocks include building blocks that are completely separated from each other with an underlying background apparent between the building blocks. Non-Final Act. 4; Ostromoukhov, col. 11, 11. 61---65 and Figures 8, 9, 17, and 18. Ostromoukhov discloses that such a graphical object serves as a security device that makes faithful counterfeiting almost impossible. Ostromoukhov, col. 9, 11. 5-26. As explained by the Examiner, it would have been obvious to one skilled in the art to make Kuntz's images from building blocks, taught by Ostromoukhov, so Kuntz's authentication device would generate 3-D 4 Appeal2017-006931 Application 13/397,069 images having the added anti-counterfeiting feature. Non-Final Act. 4; Ans. 3-5. Appellants argue Kuntz and Ostromoukhov are not analogous art because Kuntz is directed to a method of generating a 3-D effect while Ostromoukhov is directed to generating a halftone image by evolutionary screen dot contours. App. Br. 11. According to Appellants, Ostromoukhov does not teach or suggest the claimed building blocks within each of the stereoscopic projections to achieve the recited three-dimensional appearance because Ostromoukhov is not directed to generating a 3-D effect. Id. Thus, Appellants argue the prevention of non-authorized copying taught by Ostromoukhov is associated with halftone period to prevent non-authorized copies of images, and not associated in any manner with using a 3- dimensional effect. Id. That is, Appellants assert that, absent impermissible hindsight, there would have been no reason to combine the teachings of the cited art. Id. at 12. In support of these arguments, Appellants direct attention to the Declaration under 37 C.F.R. Â§ 1.1322 by co-inventor Olivier Lefebvre ("Declaration," "Declarant"). Id. at 14--15. 3 We have considered Appellants' arguments but are unpersuaded of error in the Examiner's determination of obviousness. 2 The Declaration was submitted on February 1, 2016 and indicated as having been entered into the record by the Examiner in the Non-Final Action. 3 Contrary to Appellants' arguments in the Reply Brief (see generally Reply Br.), the Examiner did consider the declaration on pages 2-3 of the Non- Final Action and determined that the declaration was insufficient to overcome the prima facie case of obviousness. Further, the Examiner addresses issues stated in the Declaration, such as the level of skill in the art, on page 4 of the Answer. 5 Appeal2017-006931 Application 13/397,069 It is well-established that nonobviousness cannot be established by attacking the references individually when the rejection is predicated upon a combination of prior art disclosures. In re Merck & Co., 800 F .2d 1091, 1097 (Fed. Cir. 1986); In re Keller, 642 F.2d 413, 425-26 (CCPA 1981) ("The test [for obviousness] is what the combined teachings of the references would have suggested to those of ordinary skill in the art."). Appellants' arguments essentially contest that the use of images made from building blocks, such as those disclosed by Ostromoukhov, would not work in the 3-D authentication device of Kuntz because the images of Ostromoukhov are not used for 3-D effect in Ostromoukhov. App. Br. 11- 12. This argument does not address the Examiner's explanation that one skilled in the art would have modified each image of Kuntz, using the respective left or right handed circularly polarizing coating, to incorporate building blocks into the images. Ans. 4--5. As noted by the Examiner, and contrary to Appellants' assertion, both Kuntz and Ostromoukhov are directed to authentication (security) devices addressing the problem of counterfeiting of documents and, thus, are analogous art. App. Br. 11-12; Ans. 3. As noted above (Non-Final Act. 4; Ans. 3-5), the Examiner provided a reasonable basis that a person of ordinary skill in the art desiring to improve the security measures against counterfeiting would have reasonably expected that modifying Kuntz's security device to have images made from separated building blocks, as taught by Ostromoukhov, would lead to a 3-D authentication device with improved anti-counterfeiting features. In re O'Farrell, 853 F.2d 894, 904 (Fed. Cir. 1988) ("For obviousness underÂ§ 103, all that is required is a reasonable expectation of success."). Thus, there is a reasonable basis to 6 Appeal2017-006931 Application 13/397,069 have combined the teachings of the prior art and arrived at the claimed invention. Appellants do not persuasively explain why the Examiner erred in finding that one skilled in the art would have modified Kuntz's images by making them from separate building blocks to incorporate the additional anti-counterfeit features of Ostromoukhov. Appellants also have not adequately explained, technically or otherwise, why one skilled in the art would not have had a reasonable expectation of success that Kuntz's images would retain the 3-D effect when made from separate building blocks as taught by Ostromoukhov. See generally Reply Br.; In re O'Farrell, 853 F.2d 894, 904 (Fed. Cir. 1988) ("For obviousness underÂ§ 103, all that is required is a reasonable expectation of success."). After all, it is the ink that provides the images required for 3-D imaging. Spec. 1; Kuntz i-f 27. We have also considered the Declaration relied upon by Appellants and agree with the Examiner's determination that it is insufficient to persuasively weigh in favor of non-obviousness in light of the prior art because it does not provide objective evidence that supports Declarant's statement that one skilled in the art would not have expected two images, each made from separated building blocks, would result in a graphic object that retains its 3-D effect. Deel. i-fi-116-17; Non-Final Act. 2-3. Accordingly we affirm the Examiner's prior art rejections of claims 1, 2, 6-12, 14--18, 36-39, and 42 under 35 U.S.C. Â§ 103(a) for the reasons presented by the Examiner and given above. 7 Appeal2017-006931 Application 13/397,069 ORDER The Examiner's rejections of claims 1, 2, 6-12, 14--18, 36-39, and 42 under 35 U.S.C. Â§ 103(a) are affirmed. No time period for taking any subsequent action in connection with this appeal may be extended under 37 C.F.R. Â§ 1.136(a)(l)(iv). AFFIRMED 8