Innovia Security Pty Ltd

Patent Trials and Appeals BoardMar 31, 2021

2020004512 (P.T.A.B. Mar. 31, 2021)

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. 14/367,675 06/20/2014 Gary Fairless Power 66298.010 4651 25005 7590 03/31/2021 Intellectual Property Dept. DeWitt LLP 2 East Mifflin Street Suite 600 Madison, WI 53703-2865 EXAMINER GRABOWSKI, KYLE ROBERT ART UNIT PAPER NUMBER 3637 NOTIFICATION DATE DELIVERY MODE 03/31/2021 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): IP-DOCKET@dewittllp.com PTOL-90A (Rev. 04/07) UNITED STATES PATENT AND TRADEMARK OFFICE ____________ BEFORE THE PATENT TRIAL AND APPEAL BOARD ____________ Ex parte GARY FAIRLESS POWER, ODISEA BATISTATOS, PHEI LOK, and MICHAEL BRUCE HARDWICK Appeal 2020-004512 Application 14/367,675 Technology Center 3600 ____________ Before NINA L. MEDLOCK, KENNETH G. SCHOPFER and ROBERT J. SILVERMAN, Administrative Patent Judges. SCHOPFER, Administrative Patent Judge. DECISION ON APPEAL Pursuant to 35 U.S.C. § 134(a), Appellant1 appeals from the Examiner’s decision to reject claims 1, 8, 9, 14, 19, 23, 29, 36, 46, 47, and 58–62, which constitute all the claims pending in this application. We have jurisdiction under 35 U.S.C. § 6(b). We AFFIRM. 1 We use the word “Appellant” to refer to “applicant” as defined in 37 C.F.R. § 1.42. Appellant identifies the real party in interest as CCL Secure Pty Ltd. Appeal Br. 2. Appeal 2020-004512 Application 14/367,675 2 BACKGROUND The Specification discloses that “[t]his invention relates to optical security devices and methods for their manufacture. More particularly, it relates to optical security devices which utilise a nanoparticle ink in their construction.” Spec. ¶ 1. CLAIMS Claims 1 and 29 are the independent claims on appeal. Claim 1 is illustrative of the appealed claims and recites: 1. An optical security device integral to a security document, including a security document substrate having a first surface and a second surface; and a metallic nanoparticle ink provided intermittently in at least one area on the first surface to produce a reflective or partially reflective patch or patches; wherein the metallic nanoparticle ink is a silver nanoparticle ink, and comprises less than 40% silver, said silver nanoparticle ink forming a semi-transparent layer on the security document, wherein a first coating is applied over the area or areas in which the metallic nanoparticle ink is provided, the first coating adhering to the first surface of the security document substrate where the metallic nanoparticle ink is not present, thereby retaining the entirety of the metallic nanoparticle ink wholly between the first surface of the security document substrate and the first coating wherein, within the at least one area where the metallic nanoparticle ink is provided intermittently, parts of the first surface of the security document substrate where the metallic nanoparticle ink is not present have a minimum dimension between 1 nm to 200μm, and parts of the first surface where the metallic nanoparticle ink is present have a minimum dimension between 1 nm and 200μm. Appeal Br. 16. Appeal 2020-004512 Application 14/367,675 3 REJECTION2 The Examiner rejects claims 1, 8, 9, 14, 19, 23, 29, 36, 46, 47, and 58–62 under 35 U.S.C. § 103 as unpatentable over Schilling3 in view of Hampden- Smith4 and Hardwick.5 DISCUSSION With respect to the rejection, Appellant relies on the same arguments for all claims, and thus, Appellant effectively groups all claims together. See Appeal Br. 11–14. We select claim 1 as representative of this group of claims, and claims 8, 9, 14, 19, 23, 29, 36, 46, 47, and 58–62 will stand or fall with claim 1. See 37 C.F.R. 41.37(c)(1)(iv). With respect to claim 1, the Examiner finds that Schilling teaches an optical security device having first and second surfaces; a nanoparticle metallic deposition provided intermittently in at least one area on the first surface; and a first coating as claimed. Final Act. 4 (citing Schilling Figs. 2, 3; ¶ 59). The Examiner also finds that Schilling teaches providing the nanoparticle metallic coating intermittently with the line spacing required by claim 1. Id. (citing Schilling ¶ 61). The Examiner acknowledges that Schilling does not disclose using a metallic ink for the nanoparticle metallic coating, but the Examiner relies on Hampden-Smith as teaching the use of metallic ink in similar devices, and the Examiner determines that it would have been obvious to use a metallic ink as the metallic layer in Schilling in 2 The Examiner has withdrawn the rejections under 35 U.S.C. § 112. See Ans. 3. 3 Schilling, US 2010/0084851 A1, pub. Apr. 8, 2010. 4 Hampden-Smith et al., US 2007/0190298 A1, pub. Aug. 16, 2007. 5 Hardwick et al., US 2010/0253062 A1, pub. Oct. 7, 2010. Appeal 2020-004512 Application 14/367,675 4 order to achieve the economic benefits described in Hampden-Smith. Id. at 5 (citing Hampden-Smith ¶ 9). The Examiner further relies on Hardwick as showing that it was known to remove opacifying layers from a security device in order to create a transparent window portion, “as an alternative to providing a cutout in an opaque substrate.” Id. (citing Hardwick ¶ 11). Finally, the Examiner explains that providing an opaque coating, such as the metallic nanoparticle ink, “in discrete regions” creates a semi-transparent layer, i.e., the spaced application of the nanoparticle ink will provide a layer in the device that is semi-transparent. Id. at 7. We agree with and adopt the Examiner’s findings and conclusions with respect to claim 1. See Final Act. 4–7; see also Ans. 3–5. As discussed below, we are not persuaded of reversible error by Appellant’s arguments. Appellant first argues that Schilling and Hampden-Smith “should not be combined” because “a vapor deposited metallic layer is not a layer which would naturally be substitutable by an ink,” and “[t]here is no inherent motivation in Schilling to do so.” Appeal Br. 12. We are not persuaded of error. The key to supporting a prima facie conclusion of obviousness under 35 U.S.C. § 103 is the clear articulation of the reason why the claimed invention would have been obvious. The Court in KSR International Co. v. Teleflex Inc., 550 U.S. 398, 418 (2007) indicated that the analysis supporting a rejection under 35 U.S.C. § 103 should be made explicit. The Federal Circuit has stated that “rejections on obviousness grounds cannot be sustained by mere conclusory statements; instead, there must be some articulated reasoning with some rational underpinning to support the legal conclusion of obviousness.” In re Kahn, 441 F.3d 977, 988 (Fed. Cir. 2006), cited with approval in KSR, 550 U.S. at 418. Here, the Examiner relies on Appeal 2020-004512 Application 14/367,675 5 an express teaching in Hampden-Smith that use of a metallic ink in creating security features has the advantage of “having high resolution at commercially acceptable rates.” Hampden-Smith ¶ 9. We determine that this express teaching from the art provides a sufficient articulated reasoning to support the Examiner’s conclusion that the combination would have been obvious. Appellant also argues that the proposed combination, which replaces Schilling’s opaque reflective layer with a semi-transparent layer, would decrease the efficacy of Schilling’s security features, i.e., it would render Schilling unsatisfactory for its intended purpose. Appeal Br. 12–13. We are not persuaded. Schilling discloses the use of a metallic reflection layer that “is of a partial configuration” in a certain region that makes it transparent or semi-transparent. Schilling ¶ 59. The Examiner finds that it would have been obvious to use a metallic ink, as taught by Hampden-Smith, as the material for forming the metallic reflection layer. See Final Act. 5. We fail to see how the substitution results in a combination that would result in decreasing the efficacy of the security features of Schilling’s unmodified device. Appellant further argues that the combination “does not disclose or suggest another coating layer which is applied over the area or areas in which the nanoparticle ink is provided.” Appeal Br. 13. We disagree for the reasons provided by the Examiner. Ans. 5. Specifically, the Examiner has identified a lacquer coating provided over the metal layer in Schilling, and Appellant does not explain adequately why the lacquer layer cannot be considered a first coating as claimed. Appeal 2020-004512 Application 14/367,675 6 Finally, Appellant argues that “there is no basis in the application for the examiner to conclude that an opaque metallic layer can be considered ‘semi-transparent’ by virtue of the pattern in which it is printed” and “the claim requires that the ink itself form a semi-transparent layer.” Appeal Br. 13. To the extent that Appellant is arguing that the claim requires that the nanoparticle ink itself is transparent, we disagree. Rather, the claim requires that the nanoparticle ink forms “a semi-transparent layer” and does not explicitly require that the ink itself is semi-transparent. As noted above, Schilling teaches that the use of a metallic layer in “a partial configuration” creates a transparent or semi-transparent portion of the film element. Schilling ¶ 59. Similarly, Hampden-Smith discloses that a semi-transparent reflective feature is formed by patterns that have opening or gaps therein. Hampden-Smith ¶ 28. Further, the Examiner also relies on Hardwick to teach removing “opacifying layers” to form a transparent window region. Id. at 5–6. Thus, the art of record teaches that a transparent or semi- transparent layer may be formed by the selective application of a metallic coating, and the Examiner finds that providing the nanoparticle ink in discrete regions will provide semi-transparency to the layer. Final Act. 7. Appellant has not explained adequately why the claimed structure differs from the structures relied upon by the Examiner. Based on the foregoing, we are not persuaded of error in the rejection of claim 1. Accordingly, we sustain the rejection of claim 1. We also sustain the rejection of claims 8, 9, 14, 19, 23, 29, 36, 46, 47, and 58–62, which fall with claim 1. Appeal 2020-004512 Application 14/367,675 7 CONCLUSION We AFFIRM the rejection of claims 1, 8, 9, 14, 19, 23, 29, 36, 46, 47, and 58–62 In summary: Claims Rejected 35 U.S.C. § Reference(s)/Basis Affirmed Reversed 1, 8, 9, 14, 19, 23, 29, 36, 46, 47, 58–62 103 Schilling, Hampden-Smith, Hardwick 1, 8, 9, 14, 19, 23, 29, 36, 46, 47, 58–62 No time period for taking any subsequent action in connection with this appeal may be extended under 37 C.F.R. § 1.136 (a). See 37 C.F.R. § 1.136 (a)(l)(iv). AFFIRMED