Ex Parte Pudleiner et al

Patent Trial and Appeal BoardMar 30, 2018

13147452 (P.T.A.B. Mar. 30, 2018)

UNITED STA TES p A TENT AND TRADEMARK OFFICE APPLICATION NO. FILING DATE 13/147,452 09/20/2011 123223 7590 04/03/2018 Drinker Biddle & Reath LLP (WM) 222 Delaware A venue, Ste. 1410 Wilmington, DE 19801-1621 FIRST NAMED INVENTOR Heinz Pudleiner 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. 074203-0310-US (286828) 3441 EXAMINER LEWIS, JUSTIN V ART UNIT PAPER NUMBER 3638 NOTIFICATION DATE DELIVERY MODE 04/03/2018 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): IPDocketWM@dbr.com penelope.mongelluzzo@dbr.com DBRIPDocket@dbr.com PTOL-90A (Rev. 04/07) UNITED ST ATES PATENT AND TRADEMARK OFFICE BEFORE THE PATENT TRIAL AND APPEAL BOARD Ex parte HEINZ PUDLEINER, MEHMET-CENGIZ YESILDAG, GEORGI OST ZIOV ARAS, JOERG NICKEL, and KLAUS MEYER Appeal2016-004597 Application 13/147,452 Technology Center 3700 Before STEVEN D.A. McCARTHY, ANNETTE R. REIMERS and BRENT M. DOUGAL, Administrative Patent Judges. REIMERS, Administrative Patent Judge. DECISION ON APPEAL STATEMENT OF THE CASE 1 Heinz Pudleiner et al. (Appellants) appeal under 35 U.S.C. Â§ 134(a) from the Examiner's decision to reject under 35 U.S.C. Â§ 103(a): (1) claims 13, 14, 19, 22, and 24--27 as unpatentable over Klein (US 2008/0290649 Al, 1 The Examiner indicates that "[ c ]laims 21 and 23 are allowed for the reasons indicated in [a] previously issued Office Action" and"[ c ]laim 28 is objected to as being dependent upon a rejected base claim, but would be allowable if rewritten in independent form including all of the limitations of the base claim and any intervening claims, for the reasons indicated in [a] previously issued Office Action." See Final Office Action 2 (hereinafter "Final Act.") (dated Mar. 5, 2015); see also Appeal Br. 2 (hereinafter "Br.") (filed Aug. 7, 2015). Appeal2016-004597 Application 13/147,452 published Nov. 27, 2008), Levy (US 2005/0001419 Al, published Jan. 6, 2005), and Geuens (US 2008/0238086 Al, published Oct. 2, 2008); (2) claims 15-17 and 29 as unpatentable over Klein, Levy, Geuens, and Takahashi(US 6,562,454 B2, issued May 13, 2003); (3) claim 18 as unpatentable over Klein, Levy, Geuens, and Herzog (US 6, 824, 849 B2, issued Nov. 30, 2004); and ( 4) claim 20 as unpatentable over Klein, Levy, Geuens, andBaggenstos (US 2008/0296887 Al, published Dec. 4, 2008). Claims 1-12 have been cancelled. We have jurisdiction under 35 U.S.C. Â§ 6(b). We AFFIRM-IN-PART. CLAIMED SUBJECT MATTER The claimed subject matter "relates to a layered structure having improved laser engravability to particular embodiments of such layered structures in the form of coextruded films, and to security documents, preferably identification documents, comprising such layered structures." Spec. 1 :2-5, Figs. 1, 3. Claims 13 and 27 are independent. Claim 13 is illustrative of the claimed subject matter and recites: 13. A layered structure comprising a first layer comprising a thermoplastic plastic, and a second layer comprising a thermoplastic plastic and a laser-sensitive additive, wherein the laser sensitive additive comprises a black pigment, wherein the frrst layer comprising a thermoplastic plastic is essentially free of laser-sensitive additives, 2 Appeal2016-004597 Application 13/147,452 wherein the second layer compnsmg a thermoplastic plastic and a laser-sensitive additive has a layer thickness of from 5 to 30 Âµm, is transparent and is inscribable by laser engraving, 2 and the black pigment is present in an amount of from 40 to 180 ppm. ANALYSIS Obviousness over Klein, Levy, and Geuens Claims 13, 14, 19, 22, and 24-26 The Examiner fmds that Klein discloses the layered structure of claim 13, including the laser sensitive additive comprising a black pigment, except Klein "fails to disclose: i) the second layer comprising a thermoplastic plastic; ii) the second layer having a layer thickness of from 5 to 30 micrometers; and iii) the black pigment being present in an amount of from 40 to 180 ppm." Final Act. 3. The Examiner relies on the teachings of Levy for disclosure of the second layer comprising a thermoplastic plastic and on the teachings of Geuens for the second layer having a layer thickness of from 5 to 30 micrometers and the black pigment being present in an amount of from 40 to 180 ppm. See id. at 3--4. In particular, the Examiner fmds that Geuens "teaches the use of pigment particles (in the form of Uvitex[ Â®] 0 B-one, used as a whitening agent per paragraph 161) within a film (para. 211) in a concentration of from 40 to 180 ppm (table 1 ). " Id. at 4. 2 Each of independent claim 13 and 27 recites, "wherein the second layer comprising fl thermoplastic plastic and fl laser-sensitive additive has a layer thickness of from 5 to 30 Âµm." Br. 15, 17, Claims App. (emphasis added). Upon review of claims 13 and 27, it appears Appellants meant to recite "wherein the second layer comprising the thermoplastic plastic and the laser- sensitive additive has a layer thickness of from 5 to 3 0 Âµm." See id. (emphasis added). 3 Appeal2016-004597 Application 13/147,452 As an initial matter, we note that Appellants' claims differentiate between a white pigment and a black pigment. Compare Appellants' claim 13 with, Appellants' claim 15. See Br. 15, Claims App. Further, Appellants correctly note that claim 13 calls for "an amount of black pigment." Br. 9. Appellants also correctly note, and the Examiner acknowledges, that "UvitexÂ® OB-one are whiteningpigments." See Br. 9 (emphasis added); see also Final Act. 4 ("Uvitex[Â®] OB-one, used as a whitening agent") (emphasis added); Ans. 11 3 ("Geuens whitening agents of paragraph 161. ") (emphasis added). Geuens discloses "[t]he term whitening agent, as used in disclosing the present invention, means a white/colourless organic compound which exhibits a blue luminescence under the influence of ambient UV-light." Geuens if 43 (emphasis added). Geuens further discloses that"[ s ]uitable whitening agents" include UvitexÂ® OB-one. See id. iii! 159-161. Given that UvitexÂ® OB-one is in reference to a white/colourless pigment rather than a black pigment, Geuens fails to disclose the "amount of black pigment," as called for in claim 13. See Br. 9. For these reasons, we do not sustain the Examiner's rejection of claims 13, 14, 19, 22, and 24--26 as unpatentable over Klein, Levy, Geuens. Claim 27 As an initial matter, we note that unlike claim 13, which recites "the black pigment is present in an amount of from 40 to 180 ppm," claim 27 more broadly recites "the laser-sensitive additive is present in an amount of from40 to 180 ppm." See Br. 15, 17, Claims App. 3 Examiner's Answer (hereinafter"Ans.") (dated Feb. 2, 2016). 4 Appeal2016-004597 Application 13/147,452 Appellants contend that "Klein does not disclose any layer structure that is 'inscribable by laser engraving.'" Br. 6. In particular, Appellants contend that "Klein pertains to laser transfer of security features which is a totally different concept from Appellants' laser inscribable layer structure." Br. 7; see also id. at 8. In response to Appellants' contention, the Examiner states that paragraphs 13 and 5 3 of Klein "discuss[] the laser transfer of security features from the inscription medium 5 of the film support system into a product or document" and "[t]he Merriam Webster dictionary defmes 'inscribe' as 'to write or cut on something'. Hence, when the security features are cut out of and thereby detached from the inscription medium 5 [of Klein], a form of inscription indeed occurs." Ans. 9; see also id. at 10 ("[V]ia the application of laser energy, portions of inscription medium 5 [of Klein] are cut out of and detached from the layer. As such, an inscription thereby occurs."). The Examiner also takes the position that the claim language "inscribable by laser engraving" is a recitation of intended use. Appellants do not apprise us of error in these fmdings of the Examiner. Appellants contend that "Klein uses a laser-sensitive substance, e.g., carbon black [0036] in high amounts, e.g. 0.5 to 10 % by weight [0039], aiming to produce a black layer . . . . Klein explicitly states 'the support film (7) is then no longer transparent or translucent to the laser light'" and "in Appellants' invention the laser sensitive layer comprises e.g. carbon black in such low amounts ( 40 to 180ppm) that the layer is transparent- not black as in Klein." Br. 7; see also id. at 8. 5 Appeal2016-004597 Application 13/147,452 Appellants argue against a reference individually when the rejection is based on a combination of references. See In re Keller, 642 F.2d413 (CCPA 1981);Jn re Merck& Co., 800F.2d1091 (Fed. Cir. 1986). The Examiner relies on the combined teachings ofKlein, Levy, and Geuens. In this case, the Examiner proposes to modify Klein's support film 7 (i.e., the "second layer") with thermoplastic material as taught by Levy. See Final Act. 3--4. The Examiner reasons "[g]iven that Klein concerns layer[ s] designed to be laser inscribable and Levy teaches the concept of providing laser inscribable layers comprising a particular thermoplastic material construction," it would have been obvious to a person of ordinary skill in the art "to incorporate Levy[' s] thermoplastic material within ... Klein[' s] laser-sensitive pigment film 7 in order to permit color laser markings, as taught by Levy." Id. at3 (citing Levy if 13). TheExaminerfurtherproposes to modify Klein and Levy with the laser-sensitive additive having a thickness of from 5 to 3 0 Âµm and being present in an amount of from 40 to 180 ppm, in view of the teachings ofGeuens. See Final Act. 3-4. The Examiner reasons "[g]iven that both Klein and Geuens concern polymeric laser-sensitive pigment films," it would have been obvious to a person of ordinary skill in the art to provide "the aforementioned Klein laser-sensitive pigment film 7 with a Geuens thickness of 12 or more micrometers, but no more than 30 micrometers" and "the aforementioned Klein carbon black particles upon said layer 7 in the Geuens concentration of 150 ppm in order to yield a resultant assembly wherein the Klein laser-sensitive pigment film 7 presents a desired appearance to an ostensible user." See Final Act. 4; see also id. at 6. The Examiner's fmdings are sound and supported by a preponderance of the evidence, and the Examiner's conclusions therefrom 6 Appeal2016-004597 Application 13/147,452 are based on rational underpinnings. Appellants do not provide persuasive evidence or argument apprising us of Examiner error. Further, in response to Appellants' argument, the Examiner states: Klein concerns a multi-layer assembly wherein the laser- modifiable inscription medium 5 can optionally contain colorants (para. 40 and claim 13 ), and Levy and Geuens concern laser-modifiable assemblies having particular materials (Levy thermoplastic material of paragraph 12; Geuens whitening agents of paragraph 161) that are capable of permitting resultant color markings (Levy para. 12-13; Geuens para. 161). As such, it would have been obvious to rely on the Levy and Geuens references for their teachings of the colorants that Klein calls for. Ans. 10-11. Appellants do not apprise us of error in these findings of the Examiner. Moreover, in response to Appellants' argument regarding support film (7) of Klein not being transparent, the Examiner states that "[p ]er paragraph 14 [of Klein], support film 7 is indeed transparent during at least a point in time during its existence/use (transparent to laser light)." Ans. 10; see also Br. 7-8. Appellants do not apprise us of error in these fmdings of the Examiner. Appellants contend that the Examiner fails "to provide a sufficient rationale" for combining Klein with Levy "to arrive at Appellants' invention, i.e., to include a layer comprising a thermoplastic plastic and a laser-sensitive additive having layer thickness of from 5 to 30 Âµm, and the black pigment being present in an amount of from 40 to 180 ppm." See Br. 7-8. 7 Appeal2016-004597 Application 13/147,452 Again, Appellants argue against a reference individually when the rejection is based on a combination of references. As discussed above, the Examiner articulates adequate reasoning based on rational underpinnings to explain why one of ordinary skill in the art would have been led to combine the teachings of the references. Moreover, as discussed above, claim 27 fails to recite the "black pigment" and more broadly recites the "laser-sensitive additive" being present in an amount of from 40 to 180 ppm. See Br. 17, Claims App. Appellants contend that "based on the disclosures of Geunes, a person of ordinary skill in the art would not have selected Appellants' claimed range" offrom40 to 180 ppm. See Br. 9. However, Appellants acknowledge that Geunes discloses amounts from "66 ppm" to "150 ppm," which are within the claimed range. See Br. 9 (citing Geunes if 284, Table 1 ). As such, Appellants do not apprise us of Examiner error. Appellants contend that "the cited references fail to provide any teaching or suggestion of a technical benefit attributable to the selection of Appellants' specific thickness and amount of [additive] that would motivate the skilled artisan to select them over any other possible thickness and amount" and that the Examiner relies on "impermissible hindsight." Br. 9. Appellants' arguments appear to be holding the Examiner to a rigid teaching, suggestion, or motivation ("T SM") standard where there must be some suggestion or motivation, either in the references themselves or in the knowledge generally available to one of ordinary skill in the art, to modify the reference or to combine reference teachings; such a standard is not required. KSR!nt'l Co. v. Teleflex Inc., 550 U.S. 398, 415 (2007) ("We begin by rejecting the rigid [application and requirement of a T SM to 8 Appeal2016-004597 Application 13/147,452 combine known elements in order to show obviousness]"). In this case, the layer thickness and additive amount cited by the Examiner falls within the claimed ranges. See Final Act. 3--4. Further, the Examiner articulates adequate reasoning based on rational underpinnings to explain why one of ordinary skill in the art would have been led to combine the teachings of the references. Appellants do not provide persuasive evidence or argument to the contrary. We also are not persuaded that the Examiner engages in impermissible hindsight in combining Klein, Levy, and Geuens. The Examiner cites specific teachings in the references themselves, not Appellants' disclosure, in support of the Examiner's articulated reasoning for combining the references as proposed in the rejection. See Final Act. 3--4; In re Cree, Inc., 818 F.3d694, 702 n.3 (Fed. Cir. 2016) (viewing an argument regarding "impermissible hindsight" as "essentially a repackaging of the argument that there was insufficient evidence of a motivation to combine the references"). Appellants contend that "a person of ordinary skill in the art would not have any reason to somehow modify the [second] layer of Klein in composition and amount because such a modification would frustrate the purpose of Klein." Br. 7. However, Appellants do not apprise us how the Examiner's proposed modifications of Klein's second layer in view of the teaching of Levy and Geuens "would frustrate the purpose of Klein." See id Stated differently, Appellants do not identify record evidence supporting the contention that modifying the second layer of Klein in composition and amount, as proposed by the Examiner "would frustrate the purpose of Klein." See id.; see In re Pearson, 494 F.2d 1399, 1405(CCPA1974) ("Attorney's argument in a brief cannot take the place of evidence."). 9 Appeal2016-004597 Application 13/147,452 Lastly, Appellants contend that "the pending claims are non-obvious and patentable over the cited combinations of references because the presently claimed amount of black pigment exhibit[ s] unexpectedly superior results." Br. 10. Given that claim 27 fails to recite the "amount of black pigment," this argument is moot. See In re Self, 671F.2d1344, 1348 (CCP A 1982) (Limitations not appearing in the claims cannot be relied upon for patentability). In summary, and based on the record presented, we are not persuaded the Examiner erred in rejecting independent claim 27 as unpatentable over Klein, Levy, and Geuens. Accordingly, we sustain the Examiner's rejection of claim 27 as unpatentable over Klein, Levy, and Geuens. Obviousness over Klein, Levy, Geuens and Takahashi Claims 15-17 Claims 15-1 7 depend directly or indirectly from claim 13. See Br. 15, Claims App. The Examiner's rejection of claims 15-17 as unpatentable over Klein, Levy, Geuens and Takahashi is based on the same unsupported fmdings in Geuens as those discussed above with respect to claim 13. See Final Act. 7. The Examiner does not rely on Takahashitoremedythe deficiencies of Geuens. Accordingly, for reasons similar to those discussed above for claim 13, we do not sustain the Examiner's rejection of claims 15- 17 as unpatentable over Klein, Levy, Geuens and Takahashi. 10 Appeal2016-004597 Application 13/147,452 Claim 29 Claim 29 depends from claim 27. See Br. 18, Claims App. Appellants contend that "[ t ]he Examiner must at least identify some teaching or suggestion, either in these references or elsewhere in the prior art, that would motivate the skilled artisan to make the Examiner's proposed combination. Relying on the mere knowledge ofTakahashi's white pigments does not meet this threshold for establishing obviousness." Br. 11; see also id. at 12 ("[T]he cited references fail to provide any teaching or suggestion of a technical benefit attributable to the use of the white pigment ... that would motivate the skilled artisan to select that white pigment."). Again, Appellants' argument appears to be holding the Examiner to a rigid teaching, suggestion, or motivation ("T SM") standard where there must be some suggestion or motivation, either in the references themselves or in the knowledge generally available to one of ordinary skill in the art, to modify the reference or to combine reference teachings; such a standard is not required. SeeKSRint'l Co. v. Teleflex Inc., 550U.S. at415. In this case, the Examiner finds that the combined teachings of Klein, Levy, and Geuens disclose "the coextruded film according to claim 2 7," but the modified Klein device "fails to disclose the frrst layer comprising a thermoplastic plastic further comprising a white pigment as filler." Final Act. 7. The Examiner fmds that "Takahashi teaches the concept of utilizing white pigment." Id. (citing Takahashi9:50-59). The Examiner reasons "[g]iven that both Klein and Takahashiconcemmulti-layer secure documents, it would have been obvious to a person of ordinary skill in the art ... to include Takahashi pigment white filler within the Klein layers in order to yield a desired aesthetic appearance." Id.; see also id. at 8. The 11 Appeal2016-004597 Application 13/147,452 Examiner's fmdings are sound and supported by a preponderance of the evidence, and the Examiner's conclusions therefrom are based on rational underpinnings. Appellants do not provide persuasive evidence or argument apprising us of Examiner error. In summary, and based on the record presented, we are not persuaded the Examiner erred in rejecting dependent claim 29 as unpatentable over Klein, Levy, Geuens, and Takahashi. Accordingly, we sustain the Examiner's rejection of claim 29 as unpatentable over Klein, Levy, Geuens, and Takahashi. Obviousness over Klein, Levy, Geuens and either Herzog, or Baggenstos Claims 18 and 20 Claims 18 and 20 depend directly from claim 13. See Br. 15-16, Claims App. TheExaminer'srejectionofclaims 18 and20 are each based on the same unsupported fmdings in Geuens as those discussed above with respect to claim 13. See Final Act. 8-9. The Examiner does not rely on Herzog or Baggenstos to remedy the deficiencies of Geuens. Accordingly, for reasons similar to those discussed above for claim 13, we do not sustain the Examiner's obviousness rejections of claims 18 and 20. DECISION We REVERSE the decision of the Examiner to reject claims 13, 14, 19, 22, and 24--26 as unpatentable over Klein, Levy, and Geuens. We AFFIRM the decision of the Examiner to reject claim 27 as unpatentable over Klein, Levy, and Geuens. 12 Appeal2016-004597 Application 13/147,452 We REVERSE the decision of the Examiner to reject claims 15-17 as unpatentable over Klein, Levy, Geuens and Takahashi. We AFFIRM the decision of the Examiner to reject claim 29 as unpatentable over Klein, Levy, Geuens and Takahashi. We REVERSE the decision of the Examiner to reject claim 18 as unpatentable over Klein, Levy, Geuens and Herzog. We REVERSE the decision of the Examiner to reject claim 20 as unpatentable over Klein, Levy, Geuens and Baggenstos. 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-IN-PART 13