Ex Parte Schmitt-Lewen

Patent Trial and Appeal Board

Sep 6, 2013

12058199 (P.T.A.B. Sep. 6, 2013)

UNITED STATES PATENT AND TRADEMARKOFFICE
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.
12/058,199 03/28/2008 Martin Schmitt-Lewen A-4647 2679
24131 7590 09/09/2013
LERNER GREENBERG STEMER LLP
P O BOX 2480
HOLLYWOOD, FL 33022-2480
EXAMINER
MAZUMDAR, SONYA
ART UNIT PAPER NUMBER
1745
MAIL DATE DELIVERY MODE
09/09/2013 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 MARTIN SCHMITT-LEWEN
____________

Appeal 2012-007067
Application 12/058,199
Technology Center 1700
____________

Before CHUNG K. PAK, HUBERT C. LORIN, and
LINDA M. GAUDETTE, Administrative Patent Judges.

PAK, Administrative Patent Judge

DECISION ON APPEAL
The named inventor (hereinafter “Appellant”)1 appeal under 35 U.S.C.
§ 134 from the Examiner’s refusal to allow claims 1 through 7 and 10, all of
the claims pending in the above-identified application.2 We have
jurisdiction pursuant to 35 U.S.C. § 6(b).

1 Appellant identifies the real party in interest as Heidelberger
Druckmaschinen AG of Heidelberg, Germany. (See Appeal Brief filed
October 31, 2011 (“App. Br.”) at 2.)
2 Although the action appealed from was a non-final rejection, we have
jurisdiction pursuant to 35 U.S.C. §§ 6 and 134 because the claims have
been twice presented and rejected. See Ex parte Lemoine, 46 USPQ2d 1420,
1423 (Bd. Pat. App. & Int. 1994).
Appeal 2012-007067
Application 12/058,199
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STATEMENT OF THE CASE
The subject matter on appeal is directed to “a method for the
production of a steganographic image on a printing material.” (Spec. 1, ¶
[0003].) The “steganographic image or feature (often also referred to as a
‘latent image’ or by the Anglicism ‘hidden image”) is first of all integrated
into a printing image or superimposed on a printing image, with it being
possible for the steganographic image to have text, image, drawing or
pattern.” (Spec. 9, ¶ [0031].) “For example, the steganographic
image can be a line of text which is concealed in a photograph, or a symbol
which is concealed in a neutral background.” (Id.) According to pages 9
and 10, paragraph [0032] of the Specification:
The steganographic image preferably contains a first
image region (a line of text in the first example given above)
and the printing image to be superimposed contains a second
image region bordering the first image region (a photograph in
the first example given above). The first image region and the
second image region have different rasters, for example as a
result of the use of mutually different line or dot rasters, with it
being possible for raster angle and/or raster frequency or raster
width to be varied in each case. In this case, preference should
be given to those raster variations in the steganographic image
as compared with the "background" printed image which are
imperceptible or barely perceptible to the naked eye.

Details of the appealed subject mattered are recited in representative
claim 13 reproduced below:

3 For purposes of this appeal, we limit our discussion to argued claim 1
consistent with 37 C.F.R. § 41.37(c)(1)(vii).
Appeal 2012-007067
Application 12/058,199
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1. A method for the production of a steganographic
image on a printing material, the method comprising the
following steps:
applying an adhesive line or dot raster variation
corresponding to the steganographic image to at least one of
the printing material or a transfer film; and
subsequently bringing the printing material into contact
with the transfer film.

(App. Br. 16 (Claims App’x) (Emphasis added).)
Appellant seeks review of the Examiner’s rejection of claims 1
through 7 and 10 under 35 U.S.C. § 103(a) as unpatentable over Schneider4
in view of Laskey,5 Koltai,6 Lofgren,7 and Burkhart8 set forth in the Answer
mailed December 22, 2011 (“Ans.”). (See App. Br. 3-4.)
ISSUES and CONCLUSIONS
The dispositive question raised by the Examiner and Appellant are:
Did the Examiner reversibly err in determining that one of ordinary
skill in the art, armed with the knowledge reflected in the collective
teachings of Schneider, Laskey, Koltai, Lofgren, and Burkhart, would have
been led to apply “an adhesive line or dot raster variation corresponding to
the steganographic image to at least one of the printing material or a transfer
film” as recited in claim 1, with a reasonable expectation of successfully

4 DE 10 2005 029 640 A1 published in the name of Schneider on December
28, 2006 (“Schneider”). Our reference to Schneider is to the corresponding
English translation of record by Schreiber Translations, Inc.
5 US 2005/0167035 A1 published in the name of Laskey et al. on
August 4, 2005 (“Laskey”).
6 US 6,104,812 issued to Koltai et al. on August 15, 2000 (“Koltai”).
7 US 6,882,737 B2 issued to Lofgren et al. on April 19, 2005 (“Lofgren”).
8 US 2006/0062427 A1 published in the name of Burkhart et al. on March
23, 2006 (“Burkhart”).
Appeal 2012-007067
Application 12/058,199
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forming an optical security feature on products, such as currency or
identification cards?
On this record, we answer this question in the negative.
PRINCIPLES OF LAW
“Non-obviousness cannot be established by attacking references
individually where the rejection is based upon the teachings of a
combination of references.” In re Merck & Co., Inc., 800 F.2d 1091, 1097
(Fed. Cir. 1986). The test for obviousness “is what the combined teachings
of the references would have suggested to those of ordinary skill in the art.”
In re Keller, 642 F.2d 413, 425 (CCPA 1981).
As stated by Supreme Court of the United States in KSR Int’l. Co. v.
Teleflex Inc., 550 U.S. 398, 418 (2007):
[A]nalysis [of whether the subject matter of a claim
would have been obvious under § 103] need not seek out
precise teachings directed to the specific subject matter of the
challenged claim, for a court can take account of the inferences
and creative steps that a person of ordinary skill in the art
would employ.

KSR “expanded the sources of information for a properly flexible
obviousness inquiry to include . . . the background knowledge, creativity,
and common sense of the person of ordinary skill.” Perfect Web
Technologies, Inc. v. InfoUSA, Inc., 587 F.3d 1324, 1329 (Fed. Cir. 2009).
An argument of counsel in a brief is not evidence. In re Walters, 168
F.2d 79, 80 (CCPA 1948) (statements of counsel in a brief cannot take the
place of evidence).
FACT FINDINGS and ANALYSES
Notwithstanding Appellant’s arguments to the contrary, the Examiner
Appeal 2012-007067
Application 12/058,199
5
correctly found that the collective teachings of Schneider, Laskey, Koltai,
Lofgren, and Burkhart would have suggested “an adhesive line or dot raster
variation corresponding to the steganographic image to at least one printing
material” as recited in claim 1, with a reasonable expectation of successfully
forming optical security features on products, such as currency or
identification cards. On this record, there is no dispute that Schneider
teaches applying an adhesive pattern corresponding to an image, including
optical security features, such as a holographic image, to a printing material
and bringing the printing material into contact with a transfer film to form
products having security features on their surfaces. (Compare Ans. 5 with
App. Br. 4-14; see also Appellant’s admission at ¶¶ [0008] and 0009] at
pages 2 and 3 of the Specification.) Indeed, in forming optical security
features, such as a holographic image, on the surface of identification cards,
employee badges, authorization cards, money, and debit and credit cards,
Schneider, at page 13, teaches that:
A process for producing a user-specific pattern on the
surface of a substrate (1) of paper, plastic, metal, glass, wood
or the like [(corresponding to the printing material recited in
claim 1)]…wherein
- A digital data set that describes the pattern is produced,
- An active adhesive agent is digitally printed over specific
sections and register-accurate with the pattern to be
produced with the aid of a digital printing process on the
surface of the substrate (1) utilizing the digital data set,
- The metallic or metallized layer [(corresponding to the
transfer film recited in claim 1)] is then applied over the
entire surface of the substrate (1) and in contact therewith,
- The adhesive agent is then activated in order to achieve an
adhesion of the metallic or metallized layer with the surface
of the substrate (1) in the area of the pattern to be produced,
- The metallic or metallized layer is then lifted off in its
entirety, whereupon the bonded areas remain on the
Appeal 2012-007067
Application 12/058,199
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substrate (1). [(See also Schneider 2, ¶ [0004], 6, ¶¶ [0011]
and [0015], and 11, ¶¶ [0029] and [0030].)]

Nor is there any dispute that Laskey teaches an image transferring process in
which an ink-jet head controlled by a computer with a suitable software is
used to print an UV curable adhesive, such as the UV curable adhesive
disclosed by Schneider, in a variety of patterns of varying complexities on a
substrate, including a hologram, prior to applying a metallized layer.
(Compare Ans. 5 with App. Br. 4-14; see also Laskey 2, 4, and 7, ¶¶ [0029],
[0065], and [0105].) In particular, Laskey teaches that “the digital nature of
the computer control of the ink-jet head allows the adhesive and hence the
foil to be applied in a variety of patterns.” ([Laskey 7, ¶ [0094].)
Although Schneider and Laskey do not specifically indicate that their
user-specific pattern, including an optical security feature, is a line or dot
raster variation corresponding to a steganographic image, the Examiner
correctly found, and Appellant has not disputed, that Koltai, Lofgren, and
Burkhart individually teach that the use of steganographic information or
image as an optical security feature to prevent counterfeiting was well
known in the art at the time of the invention. (Compare Ans. 5 and 9 with
App. Br. 4-14.) “[T]o increase the security and anticounterfeiting
capabilities of a variety of media, such as passports, licenses, and currency,”
Koltai, for example, teaches
rasterizing the first image into an [sic.] first elemental image
and rasterizing the second image, which compensated for by an
inverse of itself, into an [sic.] second elemental image. The
first elemental image and the second elemental image are then
merged into a unified elemental image based on a
predetermined decoding and compensating principle, resulting
in the second elemental image being hidden within the first
elemental image. An output image is created based on the
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Application 12/058,199
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unified elemental image where the primary image is visible to
an unaided eye while the secondary image is hidden from the
un-aided eye. [(Koltai, col. 3, l. 55 to col. 4, l.6.) (Emphasis
added.)]

Koltai also teaches that this output steganographic image (line or dot raster
variation) is also available in a digitized form and reproduction processes for
printing in a variety of media includes, for example, the use of screen dots,
like offset printing and most digital printing processes. (Koltai, col. 2, l. 65
to col. 3, l. 6, and col. 4, ll. 7-20.) Koltai further teaches that this security
feature is superior to conventional security features, such as diffraction
based holograms or variable-sized dot patterns. (Koltai, col. 1, ll. 5-43.)
Given the above teachings, we concur with the Examiner that one of
ordinary skill in the art would have been led to apply an adhesive
corresponding to an image having an optical security feature, such as the
steganographic image (unified image) in the form of a line or dot raster
variation9 available in a digital format taught or suggested by Koltai,
Lofgren, and Burkhart, on a printing material, using the adhesive printing
technique suggested by Schneider and Laskey corresponding to the digital
information, with a reasonable expectation of successfully providing an
improved optical security feature on products, such as currency or
identification cards. KSR Int'l Co. v. Teleflex Inc., 550 U.S. 398, 416 (2007)
(“The combination of familiar elements according to known methods is
likely to be obvious when it does no more than yield predictable results.”);
In re Mayne, 104 F.3d 1339, 1340 (Fed. Cir. 1997) (“Because the applicants

9 Appellants do not argue that Koltai does not disclose a steganographic
image in the form of a line or dot raster variation as defined by Appellants at
page 6 of the Appeal Brief. (App. Br. 10-14.)
Appeal 2012-007067
Application 12/058,199
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merely substituted one element known in the art for a known equivalent, this
court affirms [the rejection for obviousness].”); In re Fout, 675 F.2d 297,
301 (CCPA 1982) (“Express suggestion to substitute one equivalent for
another need not be present to render such substitution obvious.”);
In reaching this determination, we have carefully considered
Appellant’s arguments that Schneider, Laskey, Koltai, Lofgren, and
Burkhart individually do not teach or suggest “applying an adhesive line or
dot raster variation corresponding to the steganographic image to at least one
of the printing material or a transfer film” as recited in claim 1. However,
“[n]on-obviousness cannot be established by attacking references
individually where the rejection is based upon the teachings of a
combination of references.” In re Merck & Co., Inc., 800 F.2d at 1097. As
indicated supra, the collective teachings of Schneider and Laskey would
have suggested applying an adhesive corresponding to any user-specific
complex pattern or image, including an optical security feature, which is
generically inclusive of a line or dot raster variation corresponding to a
steganographic image, on a printing material as indicated by the Examiner at
page 5 of the Answer. Although Schneider and Laskey do not specifically
identify their user specific pattern or image, including an optical security
feature, as a steganographic image, as indicated by Appellant, Koltai,
Lofgren, and Burkhart, as discussed above, teach the advantage of using a
steganographic image in the form of a line or dot raster variation, which may
be also available in a digital format, as an optical security feature useful for
products, such as the currency or identification cards suggested by Schneider
and Laskey.
Appeal 2012-007067
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It follows that we find no reversible error in the Examiner’s
determination that one of ordinary skill in the art, armed with the knowledge
reflected in the collective teachings of Schneider, Laskey, Koltai, Lofgren,
and Burkhart, would have had an apparent reason to apply “an adhesive line
or dot raster variation corresponding to the steganographic image to at least
one of the printing material or a transfer film” as recited in claim 1, with a
reasonable expectation of successfully forming an optical security feature on
products, such as the currency or identification cards.
ORDER
Upon consideration of the record, and for the reasons given above and
in the Answer, it is
ORDERED that the Examiner’s decision rejecting the claims on
appeal under 35 U.S.C. § 103(a) is AFFIRMED; and
FURTHER ORDERED that no time period for taking any subsequent
action in connection with this appeal may be extended under 37 C.F.R.
§ 1.136(a) (2010).

AFFIRMED

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