Ex Parte Redmond et al

Patent Trial and Appeal Board

Apr 29, 2016

12207238 (P.T.A.B. Apr. 29, 2016)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE
12/207,238 09/09/2008
26171 7590 05/03/2016
FISH & RICHARDSON P.C. (DC)
P.O. BOX 1022
MINNEAPOLIS, MN 55440-1022
FIRST NAMED INVENTOR
James D. Redmond
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.
37689-0006002 1360
EXAMINER
LEWIS, JUSTIN V
ART UNIT PAPER NUMBER
3725
NOTIFICATION DATE DELIVERY MODE
05/03/2016 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):
P ATDOCTC@fr.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte JAMES D. REDMOND and DAWNE. DEPREY
Appeal2013-010022
Application 12/207,238
Technology Center 3700
Before JOHN C. KERINS, BRANDON J. WARNER, and
LISA M. GUIJT, Administrative Patent Judges.
KERINS, Administrative Patent Judge.
DECISION ON APPEAL
STATEMENT OF THE CASE
James D. Redmond and Dawn E. DePrey (Appellants) seek our
review under 35 U.S.C. § 134(a) of the Examiner's final rejection of claims
2-8, 10, 11, 17and19. We have jurisdiction under 35 U.S.C. § 6(b). An
oral hearing was held on April 21, 2016, with Yao Wang, Esq., appearing on
behalf of Appellants.
We AFFIRM.
Appeal2013-010022
Application 12/207 ,23 8
THE INVENTION
Appellants' invention is directed to a self-authenticating identification
document. Independent claim 17, reproduced below, is illustrative:
1 7. A self-authenticating identification document comprising:
first printed matter rendered at a first location on said
document and at a first scale enabling said first printed matter to
be resolved by a viewing person without magnification, said first
printed matter conveying identification information of a person;
second printed matter comprising information that
communicates the same identification information of the person
as said first printed matter, the second printed matter rendered at
a second microscale and at a second location on said document
and in a second color, said second microscale being significantly
smaller than said first scale, the entirety of said second printed
matter at said second location being in its entirety spaced from
said first printed matter in said first location, and said second
color being selected to effect minimal contrast between said
second printed matter in said second location and its immediate
background, said second printed matter being printed within a
visually complex graphical image having sufficient complexity
to camouflage said second printed matter from the naked eye,
said graphical image being one of a state emblem, a photograph
of the person identified and a ghost image of a photograph of the
person identified;
wherein the combination of said minimal contrast, said
second location, and said second microscale is constructed and
arranged to substantially hide the existence and location of said
second printed matter from the naked eye and prevent said
second printed matter from being substantially detected or
resolved unless a viewing party knows the second location and
views said second printed matter using a magnification lens; and
wherein a comparison of the second printed matter to the
first printed matter is capable of determining the authenticity of
the identification document.
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Application 12/207 ,23 8
THE REJECTIONS ON APPEAL
The Examiner has rejected independent claim 17, and claims 2-8, 10,
11, and 19, each depending directly therefrom, under 35 U.S.C. § 103(a) as
being unpatentable over Boissier (US 4,790,566, issued Dec. 13, 1988) in
view of Andric (US 5,449,200, issued Sept. 12, 1995).
ANALYSIS
Appellants present arguments directed solely to independent claim 17,
and expressly acknowledge that all claims on appeal are "grouped together
and thus stand or fall together." Appeal Br. 3. Accordingly, we take claim
17 as representative of the group, and claims 2-8, 10, 11, and 19 stand or fall
with claim 1 7.
Appellants' first argument relates to an assertion that, "even if the
Boiss[i]er and Andric prior art reference[s] can be combined, that purported
combination still does not make obvious the invention recited in claim 17."
Appeal Br. 5. Appellants assert that neither Boissier nor Andric discloses or
suggests a second microscale printed matter that is identification information
of a person, nor that such second microscale information is included in one
of a state emblem, a photograph of the person to whom the identification
information pertains, or a ghost image of such photograph. Id. at 6.
Appellants, in support of this position, note that the Examiner finds
that Andric discloses the presentation of microtext within an indicia area 18
involving a graphical image, or photograph, of a house structure. Id.
However, it appears that Appellants understand this to not be the end of the
inquiry, and that the Examiner proposes, in view of this teaching, to modify
Bossier to replace the Bossier microtext that is printed along with the
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Appeal2013-010022
Application 12/207 ,23 8
Bossier macrotext, and to instead include the Bossier microtext within the
graphical image, or photograph, of the individual appearing on the Bossier
identification card. Id. at 6-7, quoting Final Act. 5 (Examiner's conclusion
as to obviousness). Appellants critique the Examiner's statement as being
based on conclusory statements, and that "the Examiner has not described
how Bossier and Andric teach, suggest or disclose the recited elements in
claim 17." Id. at 7. Appellants allege that "the Examiner is combining
Boissier and Andric and further modifying both references based ... on
Appellants' own disclosure." Id.
As to the latter assertion, Appellants do not point to any alleged
"further modification" within the Examiner's actual combination of
teachings and proposed modification of the Boissier card based thereon.
Rather, Appellants appear to be arguing that, once some modification of
Bossier is made based on a bodily incorporation into Bossier of one or more
specific teachings in Andric, such as the microtext within a photograph of a
house, further modification is needed to result in the invention set forth in
claim 17. The test for obviousness is not, however, whether the features of a
secondary reference may be bodily incorporated into the structure of the
primary reference. In re Keller, 642 F.2d 413, 425 (CCPA 1981). The
Examiner relies on the concept of presenting microtext hidden by a complex
graphical image, as disclosed by Andric, in determining that it would have
been obvious to move the microtext disclosed in Boissier from the larger
macrotext to a position within the complex graphical image on the Boissier
card, which is a photograph of the person who is being identified by that
card. See Final Act. 3-5; Ans. 12.
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Appeal2013-010022
Application 12/207 ,23 8
Referring back to the allegation that the Examiner's rejection is based
upon conclusory statements, we note that Appellants point to no such
statements in the rejection, with the possible exception of the Examiner's
statement setting forth the ultimate conclusion as to obviousness, which they
quote at pages 6-7 of the Appeal Brief. Given that the ultimate
determination of obviousness is a conclusion of law, any obviousness
rejection would properly contain such a conclusory statement. Appellants,
with one exception discussed below, do not assert that the factual
underpinnings and evidence drawn from the references leading to the stated
conclusion of obviousness are incomplete, are not supported by the
evidence, or are in some other way erroneous.
We are further not persuaded by Appellants' assertion that the
Examiner has failed to explain how the combination of references teaches all
limitations set forth in claim 1 7. The Examiner cogently sets forth what
teachings of each reference are relied on, and for what purpose, and explains
in an understandable manner how these teachings are employed in reaching
and articulating the conclusion that the subject matter of claim 17 would
have been obvious. See Final Act. 3-5; Ans. 12.
Appellants take issue with one specific finding made by the Examiner,
and assert that a cited portion of Boissier does not teach a second color for
microtext being selected so as to effect minimal contrast between that
microtext and its immediate background, as is required by claim 1 7. Appeal
Br. 7-8; Reply Br. 1. Appellants maintain that "[a] review of the cited
column and line numbers [in Boissier] demonstrates that there is nothing
stated about minimum contrast, only that certain colors may be selected."
Appeal Br. 8 (emphasis added).
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Appeal2013-010022
Application 12/207 ,23 8
The Examiner replies that Appellants do not define or otherwise
quantify a level of contrast differential that would amount to the claimed
"minimal" contrast. Ans. 13. The Examiner further notes that the passage
relied on (Boissier, column 2, lines 20-36) discusses the use of two different
absorption levels for the micropixels and macropixels that are printed in the
same location. Id. That section discusses that micropixels may have values
from black to white, with the macropixels thereby having only grey values,
and that the printing will appear as dark grey on light grey. Boissier, col. 2,
11. 30-35. We agree with the Examiner that this portion of Boissier fairly
teaches selecting different colors for each component such that contrast is
minimized. To the extent that Appellants, in the Reply Brief, are attempting
to distinguish the selection of dark grey and light grey as not amounting to a
selection of colors, we note that Appellants, as can be seen in the above
quote, acknowledge that the disclosure of Boissier would be understood to
be a disclosure of selecting certain (e.g., different) colors.
Appellants additionally argue that the Examiner "improperly failed to
give the properties of the printed subject matter recited ... [in] claim 17
patentable weight." Reply Br. 2. This argument, and similar ones presented
in the Appeal Brief, appear to be a result of the Examiner making mention of
the In re Gulack1 decision, and making statements based on Gulack to the
effect that, where printed matter is not functionally related to a substrate, the
printed matter will not distinguish the invention over the prior art. See, e.g.,
Final Act. 3.
1 703 F.2d 1381 (Fed. Cir. 1983).
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Appeal2013-010022
Application 12/207 ,23 8
Not only are we of the opinion that Appellants have not established a
new and nonobvious functional relationship between the claimed printed
matter and its substrate, Appellants have pointed to no specific element in
claim 17 that was not afforded patentable weight in the Examiner's findings
directed to the teachings of the references. Accordingly, and especially in
view of the latter consideration, we are not persuaded of Examiner error in
the context of the claimed printed matter.
For the above reasons, the rejection of claim 17 is sustained. Claims
2-8, 10, 11, and 19 fall with claim 17.
DECISION
The rejection of independent claim 17, and of claims 2-8, 10, 11, and
19 depending therefrom, under 35 U.S.C. § 103(a) as being unpatentable
over Boissier in view of Andric is affirmed.
No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. § 1.136(a).
AFFIRMED
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