Ex Parte Souparis et al

Patent Trial and Appeal BoardOct 12, 2017

13522796 (P.T.A.B. Oct. 12, 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. 13/522,796 09/18/2012 Hugues Souparis 12-245 9009 34704 7590 10/13/2017 BACHMAN & LAPOINTE, P.C. 900 CHAPEL STREET SUITE 1201 NEW HAVEN, CT 06510 EXAMINER SUN, HAI TAO ART UNIT PAPER NUMBER 2616 MAIL DATE DELIVERY MODE 10/13/2017 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 HUGUES SOUPARIS and KRISTEN LE LIBOUX ____________ Appeal 2017-005742 Application 13/522,7961 Technology Center 2600 ____________ Before JEFFREY S. SMITH, JOHNNY A. KUMAR, and TERRENCE W. McMILLIN, Administrative Patent Judges. McMILLIN, Administrative Patent Judge. DECISION ON APPEAL This is a decision on appeal under 35 U.S.C. § 134(a) of the Final Rejection of claims 16, 18–24, 26, 27, and 31. Final Act. 1. We have jurisdiction under 35 U.S.C. § 6(b). We reverse and enter a new ground of rejection. 1 According to Appellants, the real party in interest is Hologram Industries. App. Br. 2. Appeal 2017-005742 Application 13/522,796 2 THE CLAIMED INVENTION The present invention relates to “the field of making objects secure, including optionally the verification and authentication of the latter.” Spec. 1:5–7. Independent claim 16 is directed to a method; independent claim 23 is directed to a non-transitory computer-readable medium; and claim 24 is directed to a label. App. Br. 21, 23. Claim 16 recites: 16. A method for making an object secure, comprising: creating a unique multi-layer graphic signature in a graphic window by overlapping with random mechanical error of relative position, in partial or total transparency, a first graphic element on a first layer and a second graphic element on a second layer, of which at least one of said first and second graphic elements comprises a random graphic element, storing said graphic signature on or in the object, wherein each graphic element is included in a respective graphic window, the shapes and dimensions of said windows being identical to one another, and a relative position of the first graphic element and of the second graphic element is random, creating a graphic identifier, from a photograph of a superposed assembly of said first graphic element and said second graphic element; or from at least one distinctive or nominative element of the object, and storing said graphic identifier on or in the object wherein the creating of the multi-layer graphic signature further comprises overlapping in partial or total transparency a third graphic element on a third layer distinct from the first layer and the second layer, and wherein the relative position of said third graphic element and of said first graphic element or of said second graphic element is random, and said third graphic element being able to comprise a random graphic element. Appeal 2017-005742 Application 13/522,796 3 REJECTION ON APPEAL Claims 16, 18–24, 26, 27, and 31 stand rejected under 35 U.S.C. § 103(a) as being unpatentable over Brundage et al. (US 8,059,858 B2, published Nov. 15, 2011) (“Brundage”), Oakes (US 2007/0164557 A1, published July 19, 2007), and Swanson (US 2011/0044556 A1, published Feb. 24, 2011). Final Act. 10. ANALYSIS Section 103 rejection of claims 16, 18–24, 26, 27, and 31 Where a claim is so indefinite that “considerable speculation as to meaning of the terms employed and assumptions as to the scope of such claims” is needed, it would be imprudent for us to pass judgment on such a rejection (under § 103(a)). See In re Steele, 305 F.2d 859, 862 (CCPA 1962) We are unable to determine whether the Examiner’s obviousness rejection is proper because discerning the proper scope of the claim requires undue and improper speculation, as discussed in our new ground of rejection below. We pro forma reverse the Examiner’s rejection of claims 16, 18–24, 26, 27, and 31 under 35 U.S.C. § 103(a). New Ground of Rejection under 35 U.S.C. § 112, second paragraph Under 35 U.S.C. § 112, second paragraph, the Specification must conclude with “one or more claims particularly pointing out and distinctly claiming the subject matter” regarded as the invention. This definiteness requirement “secure[s] to the patentee all to which he is entitled” and “apprise[s] the public of what is still open to them.” Markman v. Westview Appeal 2017-005742 Application 13/522,796 4 Instruments, Inc., 517 U.S. 370, 373 (1996) (quotation and brackets omitted). Applying the broadest reasonable interpretation of a claim, the Office establishes a prima facie case of indefiniteness with a rejection explaining how the metes and bounds of a pending claim are not clear because the claim contains words or phrases whose meaning is unclear. See In re Packard, 751 F.3d 1307, 1310 (Fed. Cir. 2014) (per curiam); Ex Parte Miyazaki, 89 USPQ2d 1207, 1211 (BPAI 2008) (precedential) (“if a claim is amenable to two or more plausible claim constructions, the USPTO is justified in requiring the applicant to more precisely define the metes and bounds of the claimed invention by holding the claim unpatentable . . . as indefinite”). In this proceeding, we apply the test for indefiniteness approved by the Federal Circuit in Packard, i.e., “[a] claim is indefinite when it contains words or phrases whose meaning is unclear.” Ex Parte McAward, Appeal 2015-006416 ( PTAB August 25, 2017) (precedential), quoting Packard, 751 F.3d at 1310, 1314; see also Packard at 1313 (stating that “claims are required to be cast in clear—as opposed to ambiguous, vague, indefinite— terms”). The limitations of independent claim 16 are ambiguous, and are amenable to multiple interpretations. The ambiguities of claim 16 appear to be the result of translating the claim from another language into the English language, where the literal meaning of the claim is different than the actual meaning in Appellants’ original disclosure. We ask the Examiner and Appellants to resolve all ambiguities in all pending claims during subsequent Appeal 2017-005742 Application 13/522,796 5 prosecution. As the Federal Circuit stated in Halliburton Energy Servs., Inc. v. M-I LLC, 514 F.3d 1244, 1255 (Fed. Cir. 2008): the patent drafter is in the best position to resolve the ambiguity in the patent claims, and it is highly desirable that patent examiners demand that applicants do so in appropriate circumstances so that the patent can be amended during prosecution rather than attempting to resolve the ambiguity in litigation. To aid Appellants and the Examiner, we identify the following ambiguities in claim 16. The claimed “graphic windows” recited in independent claims 16, 23, and 24 include mutually exclusive limitations, which render the scope unclear. This term encompasses “creating a unique multi-layer graphic signature in a graphic window by overlapping with random mechanical error of relative position” and “wherein each graphic element is included in a respective graphic window, the shapes and dimensions of said windows being identical to one another.” The scope of the claim term, when read in light of Appellants’ Specification, encompasses “inevitable mechanical tolerances from which a random error of relative position of the said windows results” (Spec. 13: 32–34) and “us[ing] the relative random error of position” (Spec. 14:12–20), as well as “the shapes and dimensions of the windows F1, F2, F3 preferably being identical to one another” (Spec. 10:6– 10). The scope of the claim term “graphic windows” encompasses both random positioning errors when overlapping the graphic windows (i.e., the graphic windows are not identical) and the graphic windows being identical. These two contradicting limitations to the “graphic windows” as Appeal 2017-005742 Application 13/522,796 6 claimed render this claim term “incoherent, opaque, or otherwise unclear in describing and defining the claimed invention.” Packard, 751 F.2d at 1311. Further, the claim term “overlapping . . . in partial or total transparency, a first graphic element on a first layer and a second graphic element on a second layer [and] a third graphic element on a third layer” as recited in claims 16 and 23 does not make sense in the context of Appellants’ disclosure. Claim 24 recites a similar limitation. The ordinary meaning of “total transparency” is complete transmission of light such that an object is see-through.2 The ordinary meaning of the claim term “graphic signature” comprising overlapping “graphic elements” on respective layers, in “total transparency” encompasses overlapping graphic elements and layers that are all completely see-through, which would result in no visible graphical elements or graphic signature. The scope of this term also encompasses partially transparent layers and graphic elements. For example, Appellants’ Specification discloses “affix[ing] for example a hologram that is at least partially transparent, so as to at least partially overlap the personalization information.” Spec. 22:25– 27. The scope of “in partial or total transparency” when read in light of the Specification, encompasses being able to overlap two partially transparent, visible elements and result in a visible superposed element (i.e., a hologram and personalization information). However, the term “total transparency” as claimed does not enable overlapping visible elements (i.e., overlapping 2 The dictionary definition of “total” is “absolute, entire” (https://www.merriam-webster.com/dictionary) and the dictionary definition of “transparent” is “having the property of transmitting light without appreciable scattering so that bodies lying beyond are seen clearly” (https://www.merriam-webster.com/dictionary/transparent). Appeal 2017-005742 Application 13/522,796 7 layers and graphic elements that are completely see-through) and would result in not visible (i.e, totally transparent) elements. Given that the claim term “overlapping . . . in partial or total transparency, a first graphic element on a first layer and a second graphic element on a second layer [and] a third graphic element on a third layer” is open to multiple, contradicting meanings, at least one of which makes little sense, the scope is unclear. Claim 16 recites “creating a graphic identifier, from a photograph of a superposed assembly of said first graphic element and said second graphic element; or from at least one distinctive or nominative element of the object.” Emphasis added. Claim 16 also recites “storing said graphic identifier on or in the object wherein the creating of the multi-layer graphic signature further comprises overlapping in partial or total transparency a third graphic element on a third layer distinct from the first layer and the second layer.” Emphasis added. If one selects the first claimed method of creating the graphic identifier “from a photograph of a superposed assembly,” it is unclear whether the superposed assembly contains only the first graphic element and second graphic element, or if the superposed assembly contains the first, second, and third graphic elements. If, alternatively, one selects the second claimed method of creating the graphic identifier “from at least one distinctive or nominative element of the object,” which does not involve the first and second graphic elements, it is unclear how “storing the graphic identifier” could then require “a third graphic element on a third layer distinct from the first layer and the second layer.” The ambiguity appears to be caused by canceling claim 17, and pasting the content of claim 17 in a wherein clause at the end of claim 16. Appeal 2017-005742 Application 13/522,796 8 Whether Appellants intend for the “graphic signature” created by the first “creating . . . by overlapping” step to include overlapping the third graphic element as recited in the wherein clause, can be clarified by amending the claim to replace the wherein clause with overlapping the third graphical element as part of the first “creating . . . by overlapping” step, or to include a second, subsequent “creating by overlapping” step, performed after photographing the superposed assembly. Similar to claim 16, the “graphic signature” recited in claim 24 is made by overlapping first and second graphic elements. Claim 24 does not indicate whether Appellants intend the “third graphic element” to be part of the “graphic signature” as claimed. The multiple plausible, contradicting constructions of these claims render claims 16 and 24 unclear. Pursuant to our authority under 37 C.F.R. § 41.50(b), we reject independent claims 16 and 24 under 35 U.S.C. § 112, second paragraph, for indefiniteness. Claims 18–23, and 26, 27, and 31 depend from their respective independent claims 16 and 24. As such, claims 18–23, 26, 27, and 31 are also indefinite. DECISION We pro forma reverse the Examiner’s rejections of claims 16, 18–24, 26, 27, and 31 under 35 U.S.C. § 103(a). In a new ground of rejection, we reject claims 16, 18–24, 26, 27, and 31 under 35 U.S.C. § 112, second paragraph, as being indefinite. This decision contains new grounds of rejection pursuant to 37 C.F.R. § 41.50(b) (2011). Section 41.50(b) provides that “[a] new ground of rejection . . . shall not be considered final for judicial review.” Appeal 2017-005742 Application 13/522,796 9 Section 41.50(b) also provides that Appellants, WITHIN TWO MONTHS FROM THE DATE OF THE DECISION, must exercise one of the following two options with respect to the new ground of rejection to avoid termination of the appeal as to the rejected claims: (1) Reopen prosecution. Submit an appropriate amendment of the claims so rejected or new evidence relating to the claims so rejected, or both, and have the matter reconsidered by the examiner, in which event the proceeding will be remanded to the examiner. . . . (2) Request rehearing. Request that the proceeding be reheard under § 41.52 by the Board upon the same record. No time period for taking any subsequent action in connection with this appeal may be extended under 37 C.F.R. § 1.136(a)(1)(iv). REVERSED 37 C.F.R. § 41.50(b)