KBA-NOTASYS SA et al.

Patent Trials and Appeals Board

May 3, 2021

2021002548 (P.T.A.B. May. 3, 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.
16/488,044 08/22/2019 Robert STIERMAN DMB-6735-6 7210
23117 7590 05/03/2021
NIXON & VANDERHYE, PC
901 NORTH GLEBE ROAD, 11TH FLOOR
ARLINGTON, VA 22203
EXAMINER
NGUYEN, QUANG X.L.
ART UNIT PAPER NUMBER
2853
NOTIFICATION DATE DELIVERY MODE
05/03/2021 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):
PTOMAIL@nixonvan.com
pair_nixon@firsttofile.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte ROB STIERMAN, ANA DIMITRIJEVIC, MARTIN PALME,
THOMAS KERSTEN, AURÉLIE BERTHON, JOHN GODFREY,
ROBERT WHITEMAN, and LAWRENCE COMMANDER
Appeal 2021-002548
Application 16/488,044
Technology Center 2800
Before JEFFREY T. SMITH, MONTÉ T. SQUIRE, and
SHELDON M. MCGEE, Administrative Patent Judges.
SMITH, Administrative Patent Judge.
DECISION ON APPEAL
STATEMENT OF THE CASE
Pursuant to 35 U.S.C. § 134(a), Appellant1 appeals from the
Examiner’s decision to reject claims 28–50. (Final Act. 1.) We have
jurisdiction under 35 U.S.C. § 6(b).
We AFFIRM.

1 The term “Appellant” to refers to “applicant” as defined in 37 C.F.R.
§ 1.42. Appellant identifies the real party in interest as KBA-Notasys SA, a
corporation of Switzerland. (Appeal Br. 3.)
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Application 16/488,044
2
CLAIMED SUBJECT MATTER
The claims are directed to a printing press with in-line casting device
for the replication and formation of a micro-optical structure. Claim 28,
reproduced below, is illustrative of the claimed subject matter:
28. A printing press adapted to carry out printing on a sheet-like
substrate for the production of security documents, the printing
press comprising:
a printing unit designed to print a first side and/or a second
side of the substrate; and
an in-line casting device adapted to apply a layer of
material acting as an optical medium on a portion of the first side
of the substrate and to replicate and form a micro-optical
structure in the layer of material acting as the optical medium,
the in-line casting device comprising at least one embossing tool,
wherein the printing unit comprises at least a first printing
group adapted to print at least one printed pattern on the second
side of the substrate in register with the micro-optical structure,
and
wherein the at least one embossing tool is designed as an
embossing cylinder, the embossing cylinder acting as a counter-
pressure cylinder and cooperating with a printing cylinder of the
at least first printing group.
REFERENCES
The prior art relied upon by the Examiner is:
Name Reference Date
Dahlgren US 3,664,261 May 23, 1972
Hoier US 2008/0271620 A1 Nov. 6, 2008
Houjou US 2011/0205282 A1 Aug. 25, 2011
Commander US 2015/0146297 A1 May 28, 2015
Lundvall US 2015/0360453 A1 Dec. 17, 2015
Schaede US 2016/0200088 A1 July 14, 2016

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REJECTIONS2
I. Claims 28–34, 36–43, 45, 46, and 48–50 are rejected under 35
U.S.C. § 103 as being unpatentable over the combination of Hoier, Schaede,
and Commander. (Final Act. 3.)
II. Claim 35 is rejected under 35 U.S.C. § 103 as being unpatentable
over the combination of Hoier, Schaede, Commander, and further in view of
Dahlgren. (Final Act. 8.)
III. Claim 44 is rejected under 35 U.S.C. § 103 as being unpatentable
over the combination of Hoier, Schaede, Commander, and further in view of
Lundvall. (Final Act. 9.)
IV. Claim 47 is rejected under 35 U.S.C. § 103 as being unpatentable
over the combination of Hoier, Schaede, Commander, and further in view of
Houjou. (Final Act. 10.)

OPINION
We review the appealed rejections for error based upon the issues
Appellant identifies, and in light of the arguments and evidence produced
thereon. See In re Jung, 637 F.3d 1356, 1365 (Fed. Cir. 2011) (“[I]t has long
been the Board’s practice to require an applicant to identify the alleged error
in the examiner’s rejections . . . ” citing Ex parte Frye, 94 USPQ2d 1072,
1075 (BPAI 2010) (precedential)).
Appellant for Rejections I–IV relies on the same arguments for claims
28–50, focusing only on independent claim 28 (Appeal Br. 14–22).
Appellant does not present separate arguments for Rejections II–IV under a

2 The Examiner has withdrawn the rejection of claim 37 under 35 U.S.C.
§ 112(b). (Advisory Action mailed August 19, 2020.)
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separate heading for claims 35, 44 and 47. (Appeal Br. 6–9.) Therefore, we
decide this appeal on the basis of claim 28, which we designate as
representative pursuant to 37 C.F.R. §41.37(c)(1)(iv).
The Examiner finds Hoier teaches a printing press adapted to carry
out printing on a sheet-like substrate for the production of security
documents. The Examiner finds Hoier is silent regarding the printing press
comprising an in-line casting device comprising at least one embossing tool
designed as an embossing cylinder. (Final Act. 3.) The Examiner finds
Schaede teaches a printing press comprising an in-line casting device
comprising at least one embossing tool designed as an embossing cylinder.
(Final Act. 3.)
The Examiner finds Commander teaches a printing group that
performs printing simultaneously during the formation of the micro-optical
structure. The Examiner determines it would have been obvious to modify
the combination of Hoier and Schaede to simultaneously perform printing
micro-images opposing the micro-optical structure. (Final Act. 4.) The
Examiner further determines the combination of Commander with Hoier and
Schaede would teach the embossing cylinder acting as a counter-pressure
cylinder and cooperating with a printing cylinder of the printing group to
achieve optimum registration between the micro-images and lenses. (Final
Act. 4; Commander ¶ 146.)
Appellant argues Commander distinguishes between casting and
printing techniques and teaches that the casting and printing processes
cannot be performed simultaneously because the casting process and the
printing process must be performed in two or more entirely separate
manufacturing processes. (Appeal Br. 6–7; Commander ¶¶ 6, 9.) Thus,
Appellant argues that one of ordinary skill would have understood that the
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disclosure in Commander ¶ 146 does not apply to a combination of printing
and casting. (Appeal Br. 7–8.) Appellant argues Commander does not
provide any guidance for using an embossing cylinder as a counter-pressure
cylinder for a printing unit. (Appeal Br. 8–9.) Rather, Appellant argues
Commander merely teaches printing lenses, tactile elements and micro-
images in the same in-line process. Thus, Appellant maintains there is no
motivation in Commander to combine the printing unit of Hoier with the in-
line casting device of Schaede. (Reply Br. 3–4.)
Appellant’s arguments are not persuasive of reversible error. A
claimed invention is unpatentable if the differences between it and the prior
art “are such that the claimed invention as a whole would have been obvious
before the effective filing date of the claimed invention to a person having
ordinary skill in the art to which the claimed invention pertains.” 35 U.S.C.
§ 103. “The combination of familiar elements according to known methods
is likely to be obvious when it does no more than yield predictable results.”
KSR Int'l Co. v. Teleflex Inc., 550 U.S. 398, 416 (2007). The question to be
asked, then, is “whether the improvement is more than the predictable use of
prior art elements according to their established functions.” Id. at 417.
A person of ordinary skill in the art would have recognized the
purpose of Commander is to achieve optimum registration between the
micro-images and lenses. (Commander ¶ 146.) Commander teaches printing
and casting can be performed sequentially or simultaneously. (Commander
¶ 145.) Contrary to Appellant’s argument, Commander’s discussion
appearing in paragraphs 6–9 describes the advantages of registering the
tactile elements to the synthetic images (i.e., creating a high bar for
counterfeiters) and does not suggest that casting and printing cannot be
performed simultaneously. Appellant has not directed us to evidence
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establishing that Commander’s teaching of simultaneous printing and
casting excludes a particular printing machine.
Accordingly, we affirm the Examiner’s decision to reject claims
28–50 under 35 U.S.C. § 103 for the reasons presented by the Examiner and
given above.

CONCLUSION
The Examiner’s decision to reject claims 28–50 is AFFIRMED.
DECISION SUMMARY
Claim(s)
Rejected
35 U.S.C. § Reference(s)/Basis Affirmed Reversed
28–34, 36–
43, 45, 46,
48–50
103 Hoier, Schaede,
Commander
28–34,
36–43, 45,
46, 48–50

35 103 Hoier, Schaede,
Commander,
Dahlgren
35
44 103 Hoier, Schaede,
Commander,
Lundval
44
47 103 Hoier, Schaede,
Commander, Houjou
47
Overall
Outcome
28–50

RESPONSE
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)(1)(iv).
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AFFIRMED