Günter Endres et al.

Patent Trials and Appeals Board

Sep 4, 2019

13810921 - (D) (P.T.A.B. Sep. 4, 2019)

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.
13/810,921 01/18/2013 Günter Endres 19838.61 1282
22913 7590 09/04/2019
Workman Nydegger
60 East South Temple
Suite 1000
Salt Lake City, UT 84111
EXAMINER
LEWIS, JUSTIN V
ART UNIT PAPER NUMBER
3638
NOTIFICATION DATE DELIVERY MODE
09/04/2019 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):
Docketing@wnlaw.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
____________

BEFORE THE PATENT TRIAL AND APPEAL BOARD
____________

Ex parte GÜNTER ENDRES, JÜRGEN KARL STAHL,
and LARS HOFFMANN1
____________

Appeal 2017-011526
Application 13/810,921
Technology Center 3600
____________

Before GEORGE R. HOSKINS, MICHAEL L. WOODS,
and NATHAN A. ENGELS, Administrative Patent Judges.

WOODS, Administrative Patent Judge.

DECISION ON APPEAL

STATEMENT OF THE CASE
Günter Endres et al. (“Appellants”) appeal under 35 U.S.C. § 134(a)
from the Examiner’s decision rejecting claims 21–40. Appeal Br. 1.
We have jurisdiction over this appeal under 35 U.S.C. § 6(b).

SUMMARY OF THE DECISION
We AFFIRM.

1 According to Appellants, the real party in interest is Giesecke & Devrient
GmbH. Appeal Br. 2.
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CLAIMED SUBJECT MATTER
Appellants’ invention relates to “a multilayer security thread that is
integrated in a card-shaped data carrier . . . and a method for producing the
data carrier and the security thread.” Spec. ¶ 1. Claims 21 and 31 are the
independent claims on appeal before us. Appeal Br. 29–33 (Claims App.).
Claim 21 is illustrative and reproduced below, with emphases added to
limitations discussed in this Decision.
21. A multilayer security thread for a data carrier, the
security thread comprising:
a carrier foil having a first surface and a second surface,
wherein
a coating including a holographic information item is
formed on the first surface, and
the second surface includes a thermoplastic layer
configured to be bonded in direct contact with a polycarbonate
layer of the data carrier by hot lamination, wherein
the thermoplastic layer is a non-adhesive layer, and
the thermoplastic layer is configured to be bonded in
direct contact with the polycarbonate layer of the data carrier
without any adhesive or primer between the thermoplastic layer
and the polycarbonate layer.
Id. at 29 (Claims App.) (emphases added).

THE REJECTIONS
The Examiner rejected:
(a) Claims 21, 22, and 25–30 under 35 U.S.C. § 103(a) as
unpatentable over Hoffmuller (US 2009/0115185 A1, published
May 7, 2009), Kiekhaefer (US 6,758,936 B1, issued July 6, 2004),
and Jones (US 2005/0035590 A1, published Feb. 17, 2005). Final
Act. 2–3.
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(b) Claims 31–38 and 40 under 35 U.SC. § 103(a) as unpatentable
over Hoffmuller, Jones, and Kiekhaefer. Final Act. 6.
(c) Claims 23 and 24 under 35 U.SC. § 103(a) as unpatentable over
Hoffmuller, Kiekhaefer, Jones, and Johnson (US 3,719,523, issued
Mar. 6, 1973). Final Act. 11.
(d) Claim 39 under 35 U.SC. § 103(a) as unpatentable over
Hoffmuller, Jones, Kiekhaefer, and Leenders (US 2008/0136161
A1, published June 12, 2008). Final Act. 12.

ANALYSIS
I. Claims 21, 22, and 25–30 Rejected Under Hoffmuller, Jones, and
Kiekhaefer
Appellants contest the rejection of claims 21, 22, and 25–30
collectively. Appeal Br. 10, 19–20. We select claim 21 as representative,
treating claims 22 and 25–30 as standing or falling with representative claim
21. See 37 C.F.R. § 41.37(c)(1)(iv).

A. Examiner’s Rejection
In rejecting claim 21, the Examiner relies on Hoffmuller for
disclosing several features of the claimed security thread, citing, inter alia,
Hoffmuller’s Figure 1. See Final Act. 2–3. We reproduce Hoffmuller’s
Figure 1, below:
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Figure 1 depicts a banknote with an embedded security thread. Hoffmuller
¶ 30. According to the Examiner, Figure 1 discloses data carrier 10 and
multilayer security thread 12. Final Act. 3 (citing in part Hoffmuller ¶¶ 16,
35).
The Examiner also refers to Hoffmuller’s Figure 2 (id.), which we
also reproduce, below:

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Figure 2 depicts a cross section of a security element. Hoffmuller ¶ 31.
According to the Examiner, Figure 2 discloses carrier foil 22, with an
upper/first surface and a lower/second surface, with coating 24 including
holographic information item 26 formed on the first/upper surface. See
Final Act. 3 (citing Hoffmuller ¶ 45).
The Examiner acknowledges, however, that Hoffmuller does not
disclose the second surface including a thermoplastic layer. Id. To address
this limitation, the Examiner relies on Kiekhaefer, citing Kiekhaefer’s Figure
1. Final Act. 3. We reproduce Kiekhaefer’s Figure 1, below:
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Figure 1 depicts a cross-sectional view of a plastic card, including the layers
used in manufacturing the card. Kiekhaefer col. 3, ll. 53–55. The Examiner
finds that Kiekhaefer’s Figure 1 shows data carrier 10 with layer 16 bonded
in direct contact with thermoplastic layer 15, and without any adhesive or
primer between thermoplastic layer 15 and layer 16. Final Act. 3 (citing
Kiekhaefer col. 2, ll. 54–55; col. 4, ll. 26–27).
In combining Hoffmuller with Kiekhaefer, the Examiner reasons that
a skilled artisan would have formed Hoffmuller’s plastic substrate foil
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(element 22) with Kiekhaefer’s thermoplastic coating 15 material “in order
to provide the benefit of facilitating a solid bond between the Hoffmuller
security element 12 thread and a card to which it may be attached, as
explicitly taught by Kiekhaefer.” Final Act. 4 (citing Kiekhaefer Abstract).
The Examiner also acknowledges that Hoffmuller fails to disclose that
its data carrier has a polycarbonate layer, and relies on Jones for disclosing a
layer of its data carrier as being polycarbonate. Final Act. 4 (citing Jones
Abstract). Below, we reproduce Jones’s Figure 3.

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Figure 3 depicts an identification document having a relatively thin
layer of overlaminate 30 coupled to image receiving layer 24. Jones ¶¶ 59,
61 80. In one embodiment, overlaminate 30 comprises the same material as
does core 20 and transparent laminate 22. Id. ¶ 80. For example, all three
layers may comprise polycarbonate. Id.
In combining Hoffmuller with Jones, the Examiner reasons that a
skilled artisan would have applied Jones’s polycarbonate construction to
Hoffmuller “in order to provide the benefit of yielding a resultant card
assembly with an improved degree of durability, as taught by Jones.” Final
Act. 4 (citing Jones ¶ 36, Fig. 3).

B. Analysis
In contesting the rejection of claim 21, Appellants assert that neither
Hoffmuller, Kiekhaefer, nor Jones describes “a thermoplastic layer
configured to be bonded in direct contact with a polycarbonate layer (12) of
the data carrier (1) by hot lamination.” Appeal Br. 19. Appellants argue
that the proposed combination “fails to disclose or suggest all features
required by claim 21.” Id.
Appellants’ argument is not persuasive, as non-obviousness cannot be
shown by attacking references individually where the rejection is based upon
the teachings of a combination of references. See In re Merck & Co., 800
F.2d 1091, 1097 (Fed. Cir. 1986).
In the instant case, Appellants identify several disclosures from the
cited art to support their argument.
First, Appellants point out that “Kiekhaefer makes no mention
regarding any ‘security thread’ nor any layer or feature that could be
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considered analogous to a ‘security thread’ of data carrier.” Appeal Br. 17.
Appellants further point out that “Kiekhaefer’s thermoplastic heat bondable
coating 15 is not part of a security thread or anything that could be
analogous to a security thread.” Id. at 18.
The Examiner relies on Hoffmuller, however, for disclosing the
claimed “security thread,” not Kiekhaefer. Final Act. 3. As such, even if we
assume Appellants’ argument to be true, in that Kiekhaefer “makes no
mention regarding any ‘security thread’” (Appeal Br. 17), Appellants’
argument does not identify Examiner error.
Second, Appellants point out that “Kiekhaefer describes ink layer 16
as just that, an ink layer and not as a polycarbonate layer of the data carrier.”
Id. at 18. Appellants further contend that “the Office Action fails to give
any evidence or reason to suppose that Kiekhaefer’s thermoplastic heat
bondable coating 15 is ‘a thermoplastic layer configured to be bonded in
direct contact with a polycarbonate layer (12).” Id.
As to Appellants’ second argument, the Examiner relies on Jones for
disclosing polycarbonate layers, not Kiekhaefer. Final Act. 4. As such, and
as with Appellants’ first argument, even if Kiekhaefer does not disclose a
polycarbonate layer, Appellants’ argument does not identify Examiner error.
Appellants also argue that both Hoffmuller and Jones require adding
an adhesive or primer in hold layers together. Appeal Br. 15 (Huffmuller),
17 (Jones). However, the Examiner relies on Kiekhaefer for disclosing a
thermoplastic layer that can be bonded to other layers, such as Jones’s
polycarbonate when added for durability, by hot lamination without any
adhesive or primer. Final Act. 3–4. Appellants particularly suggest Jones
“describes that it is difficult” to laminate polycarbonate without an adhesive.
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Appeal Br. 17 (citing Jones ¶ 80). However, the cited disclosure reflects
only that it may be difficult to adhere polyethylene terephthalate (PET)
layers together via lamination without an adhesive. Jones ¶ 80. There is no
such disclosure concerning polycarbonate layers. Id. Thus, there is no
evidence of record to rebut the Examiner’s finding that Kiekhaefer’s
thermoplastic layer would bond to Jones’s polycarbonate layer by hot
lamination, without any adhesive or primer.
Appellants further argue that the Examiner’s reason for combining the
cited art is not based on rational underpinnings. Appeal Br. 19.
We disagree.
As discussed above, the Examiner reasons that a skilled artisan would
have bonded Hoffmuller’s security element 12 to a card with a thermoplastic
coating “in order to provide the benefit of facilitating a solid bond.” Final
Act. 4. We agree that this reason is supported by rational underpinnings, as
Kiekhaefer teaches a “secure plastic card” with a “thermally bondable
coating layer.” See, e.g., Kiekhaefer Abstract.
We also find that the Examiner’s reason for combining Hoffmuller
with Jones is supported by rational underpinnings. Jones discloses a card
constructed of polycarbonate layers, and we agree that a skilled artisan
would have used polycarbonate layers, as disclosed in Jones, to improve the
durability of Hoffmuller’s basic card structure. Final Act. 4 (citing Jones
Fig. 3).
Appellants also argue that “there is no reason for one skilled in the art
to replace Kiekhaefer’s printed ink layer 16 with Jones’ polycarbonate core
layer 20.” Appeal Br. 19.
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Appellants’ argument is not responsive to the rejection, however, as
the Examiner does not propose to replace Kiekhaefer’s printed ink layer 16
with Jones’ polycarbonate layer. See Final Act. 3–4; see also Ans. 15
(confirming the same). Rather, the Examiner simply proposes to use
polycarbonate layers, as taught by Jones, with Hoffmuller’s basic card
structure. Final Act. 4.
Appellants also argue that the Examiner’s proposed modification
would render Kiekhaefer unsatisfactory for its intended purpose. Appeal Br.
19. Appellants’ argument is unavailing, however, as the Examiner does not
propose to modify Kiekhaefer. See Final Act. 3–4; see also Ans. 16
(confirming the same).
For the foregoing reasons, we affirm the rejection of claim 21, and
claims 22 and 25–30, which fall with claim 21, as unpatentable over
Hoffmuller, Kiekhaefer, and Jones. We also adopt as our own the
Examiner’s findings and reasoning as set forth in the Final Office Action
and Answer.

II. Claims 23 and 24 Rejected Under Hoffmuller, Kiekhaefer, Jones, and
Johnson
Claims 23 and 24 depend from claim 21 and the Examiner relies on
Johnson for satisfying at least some of these claims’ additional limitations.
See Final Act. 11 (citations omitted).
In contesting this rejection, Appellants rely on the same arguments
discussed supra pertaining to independent claim 21. Appeal Br. 19.
For the same reasons Appellants’ arguments contesting the rejection
based on Hoffmuller, Kiekhaefer, and Jones are unpersuasive, Appellants’
arguments contesting the rejection of claims 23 and 24 based on Hoffmuller,
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Kiekhaefer, Jones, and Johnson are also unpersuasive. Accordingly, we
affirm the rejection of claims 23 and 24 as unpatentable.

III. Claims 31–38 and 40 Rejected Under Hoffmuller, Jones, and
Kiekhaefer
Appellants contests the rejection of claims 31–38 and 40 collectively.
Appeal Br. 27. We select claim 31 as representative, treating claims 32–38
and 40 as standing or falling with representative claim 31. See 37 C.F.R.
§ 41.37(c)(1)(iv).

A. Examiner’s Rejection
In rejecting claim 31, and as with claim 21, the Examiner relies on
Hoffmuller for disclosing several features of the claimed multilayer data
carrier. See Final Act. 6–7 (citing in part Hoffmuller Figs. 1, 2). In
particular, the Examiner relies on Hoffmuller for disclosing the claimed data
carrier 10 comprising first and second layers—the layers between which
security thread 12 is exposed. Id. at 6. The Examiner also finds that
Hoffmuller discloses carrier foil 22 with a first/upper surface and a
second/lower surface, as seen in Figure 2. Id. at 7. The Examiner further
finds that Hoffmuller discloses optically variable coating 24 including
holographic information item 26. Id. (citing Hoffmuller ¶¶ 2, 45).
The Examiner acknowledges that Hoffmuller does not disclose that its
first and second layers include a polycarbonate layer and a transparent cover
layer. Id. To address these limitations, the Examiner relies on Jones, citing
its Figure 3, and reasons that a skilled artisan would have used Jones’s
construction “in order to provide the benefit of yielding a resultant card
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assembly with an improved degree of durability.” Id. at 7 (referencing
rejection of claim 21); see also id. at 4 (citing Jones ¶ 36).
The Examiner further acknowledges that Hoffmuller does not disclose
the second surface including a non-adhesive thermoplastic layer directly
bonded to the polycarbonate layer. Final Act. 7. To address this limitation,
the Examiner relies on Kiekhaefer for teaching a non-adhesive thermoplastic
layer and reasons that a skilled artisan would have modified Hoffmuller with
Kiekhaefer’s thermoplastic layer, as similarly combined in rejecting claim
21. Id. at 7–8 (citations omitted). In particular, the Examiner reasons that a
skilled artisan would have formed Hoffmuller’s plastic substrate foil 22 with
Kiekhaefer’s thermoplastic coating “in order to provide the benefit of
facilitating a solid bond . . . [with] a card to which it may be attached.” Id. at
4 (citing Kiekhaefer Abstract).

B. Analysis
In contesting the rejection of claim 31, Appellants argue that the
“proposed modification of Hoffmuller, Jones, and Kiekhaefer fails to arrive
at the features of claim 31.” Appeal Br. 25. In support of this general
argument, Appellants present arguments similar to those presented in
challenging the rejection of claim 21.
First, Appellants argue that “Kiekhaefer makes no mention regarding
any ‘security thread.’” Id. The Examiner relies on Hoffmuller, however, for
disclosing the claimed “security thread,” not Kiekhaefer. Final Act. 3.
Second, Appellants argue that “Kiekhaefer’s lithographic printed ink
layer 16 does not satisfy any of the required features of the ‘polycarbonate
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layer of the data carrier.’” Appeal Br. 25. The Examiner relies on Jones for
disclosing polycarbonate layers, however, not Kiekhaefer. Final Act. 7.
Third, Appellants argue that “Jones fails to disclose or suggest a
thermoplastic layer being bonded to the polycarbonate layer 20 by hot
lamination.” Appeal Br. 26. The Examiner relies on Kiekhaefer for
disclosing a thermoplastic layer bonded by hot lamination. Final Act. 7–8.
Fourth, Appellants argue that “there is no reason for one skilled in the
art to replace Kiekhaefer’s printed ink layer with Jones’ polycarbonate core
layer 20.” Appeal Br. 26. The Examiner, however, does not propose to
replace Kiekhaefer’s printed ink layer with Jones’s polycarbonate layer. See
Final Act. 7–8.
Fifth, Appellants argue that the proposed modification of Kiekhaefer
would cause Kiekhaefer to be unsatisfactory for its intended purpose.”
Appeal Br. 27. The Examiner does not propose to modify Kiekhaefer,
however. See Final Act. 7–8.
For the foregoing reasons, we affirm the rejection of claim 31, and
claims 32–38 and 40, which fall with claim 31, as unpatentable over
Hoffmuller, Jones, and Kiekhaefer. We also adopt as our own the
Examiner’s findings and reasoning as set forth in the Final Office Action
and Answer.

IV. Claim 39 Rejected Under Hoffmuller, Jones, Kiekhaefer, and
Leenders
Claim 39 depend from claim 31 and the Examiner relies on Leenders
for satisfying an additional limitation from claim 31. See Final Act. 12
(citations omitted).
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In contesting this rejection, Appellants rely on the same arguments
discussed supra pertaining to independent claim 31. Appeal Br. 27.
For the same reasons Appellants’ arguments contesting the rejection
based on Hoffmuller, Kiekhaefer, and Jones are unpersuasive, Appellants’
arguments contesting the rejection of claim 39 based on Hoffmuller, Jones,
Kiekhaefer, and Leenders are also unpersuasive. Accordingly, we affirm the
rejection of claim 39 as unpatentable.

SUMMARY
We affirm the rejection of claims 21, 22, and 25–30 under 35 U.S.C.
§ 103(a) as unpatentable over Hoffmuller, Kiekhaefer, and Jones.
We also affirm the rejection of claims 31–38 and 40 under 35 U.S.C.
§ 103(a) as unpatentable over Hoffmuller, Jones, and Kiekhaefer.
We also affirm the rejection of claims 23 and 24 under 35 U.S.C.
§ 103(a) as unpatentable over Hoffmuller, Kiekhaefer, Jones, and Johnson.
We also affirm the rejection of claim 39 under 35 U.S.C.
§ 103(a) as unpatentable over Hoffmuller, Jones, Kiekhaefer, and Leenders.
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).

AFFIRMED