Ex Parte Pallotta

Patent Trial and Appeal Board

Sep 24, 2018

13696358 (P.T.A.B. Sep. 24, 2018)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE
13/696,358 11/06/2012
23389 7590 09/26/2018
SCULLY SCOTT MURPHY & PRESSER, PC
400 GARDEN CITY PLAZA
SUITE 300
GARDEN CITY, NY 11530
FIRST NAMED INVENTOR
Pasquale Pallotta
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
ATTORNEY DOCKET NO. CONFIRMATION NO.
29412 1389
EXAMINER
LEWIS, JUSTIN V
ART UNIT PAPER NUMBER
3638
NOTIFICATION DATE DELIVERY MODE
09/26/2018 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):
Docket@SSMP.COM
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Exparte PASQUALE PALLOTTA 1
Appeal2018-002354
Application 13/696,358
Technology Center 3600
Before JOHN C. KERINS, FREDERICK C. LANEY, and
ALYSSA A. FINAMORE, Administrative Patent Judges.
KERINS, Administrative Patent Judge.
DECISION ON APPEAL
STATEMENT OF THE CASE
Pasquale Pallotta ("Appellant") appeals under 35 U.S.C. § 134(a)
from a final rejection of claims 41, 43, and 44. We have jurisdiction under
35 U.S.C. § 6(b).
We REVERSE and ENTER A NEW GROUND OF REJECTION
UNDER 37 C.F.R. § 41.50(b).
1 FEDRIGONI S.P.A. identified as being the real party in interest. Br. 2.
Appeal2018-002354
Application 13/696,358
THE INVENTION
Appellant's invention is directed to an anti-counterfeiting document.
Claim 41, reproduced below, is illustrative (with formatting added):
41. An anti-counterfeiting document, comprising at least one
matrix watermark which can be decoded by means of optical
devices and/ or by means of tactile reading,
wherein said at least one matrix watermark has, visible in
transmitted light, a plurality of first hollowed regions and a
plurality of at least second regions, said first hollowed region
being darker than said second region,
said plurality of first hollowed regions and said plurality of at
least second regions being obtained at a matrix-constituted area
which is defined on a watermarking wire mesh, wherein said
second regions correspond to a plurality of electrotype elements
of said wire mesh,
said watermarking wire mesh being a continuous element such
that said first hollowed regions and said second regions are
merged without discontinuities.
REJECTION
The Examiner rejects claims 41, 43, and 44 under 35 U.S.C. § I03(a)
as being unpatentable over Howland (WO 2009/147393 Al, published Dec.
10, 2009). 2
2 Any reference to specific portions of Howland are to the corresponding US
PGPUB No. US 2011/0037248 Al (published February 17, 2011), to
maintain consistency with the Examiner's citation to this US counterpart.
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Application 13/696,358
ANALYSIS
The Examiner, in elaborating as to his position that Howland discloses
most of the limitations appearing in claim 41, makes clear that it is the paper
portion overlying the wire mesh in Howland that is relied on as meeting
various claim limitations, and not any structural aspects of the wire mesh
itself. Ans. 5-8. The Examiner states at various points that "watermark 11
is a portion of the paper substrate 1 O" in Howland, "[ w ]atermark 11 is not a
portion of the wire mesh," "the first and second regions that are to be
'merged without discontinuities' are supposed to be regions of the claimed
watermark- not regions of the wire mesh," and, "[a]s such, it appears that
Appellant's argument misunderstands/misconstrues the very nature and
content of Appellant's claim 41 itself." Id. at 7-8.
The language of claim 41 is contrary to the Examiner's construction,
and Appellant's arguments traversing the rejection indeed are directed to the
watermark being regions of the wire mesh. Claim 41 recites that "said
plurality of first hollowed regions and said plurality of at least second
regions being obtained at a matrix-constituted area which is defined on a
watermarking wire mesh." Br. 11 (Claims Appendix) (emphasis added).
This comports with what is illustrated in Figures 9 and 10, and the
accompanying textual description.
Howland itself recognizes that a wire mesh layer may function to
provide what it terms a "background wiremark pattern," and a stated goal in
Howland is to produce a watermark pattern of a different pitch than the
background wiremark pattern. Howland ,r 12. Howland further notes that
the paper fibres placed onto the wire mesh will distribute into a pattern that
reflects the structure of the wire mesh to create the wire mark, in a
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Application 13/696,358
description that resembles the Examiner's attempt to explain how paper is
introduced onto the mesh to form a finished document. Id. at ,r 16; Ans. 6.
Notwithstanding that paper fibres are to be used to cover Appellant's wire
mesh in producing the finished document, the explicit limitations in claim 41
do not involve paper fibres.
Accordingly, the Examiner's findings relative to paper fibres forming
the first hollowed regions and the second regions, and forming a continuous
element that merges, without discontinuities, the first hollowed regions and
second regions, do not establish that a watermarking wire mesh has these
same properties, in particular the mesh being a continuous element allowing
for the first and second regions to be merged without discontinuities.
The rejection of claims 41, 43, and 44 as being unpatentable over
Howland is, therefore, not sustained.
New Ground of Rejection--Claims 41, 43, and 44--Written Description
Claims 41, 43, and 44 are rejected under 35 U.S.C. § 112, first
paragraph, as failing to meet the written description requirement set forth
therein.
The written description requirement of 35 U.S.C. § 112, first
paragraph, is satisfied when the disclosure of the application reasonably
conveys to those skilled in the art that the inventor had possession of the
claimed subject matter as of the filing date. Ariad Pharms. v. Eli Lilly, 598
F.3d 1336, 1351 (Fed. Cir. 2010). The application as filed fails to evidence
that Appellant had possession of an anti-counterfeiting document having "[a]
watermarking wire mesh [ that is] a continuous element such that said first
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Application 13/696,358
hollowed regions and said second regions are merged without
discontinuities." Br. 11 (Claims Appendix).
The limitation in question was added to claim 41 in an Amendment
dated July 11, 2016. In the "Remarks" section of that Amendment,
Appellant averred that written descriptive support for the limitation could be
found throughout the application, including in Figure 10.
As alluded to above, Appellant relies heavily on distinguishing
Howland on the basis that the Howland mesh layer does not meet the
limitations requiring the mesh to be continuous, such that the claimed first
and second regions are merged without discontinuities. Br. 3-5. However,
Appellant's application as filed contains no disclosure of any aspects of the
wire mesh therein that distinguish Appellant's structure from the wire mesh
disclosed in Howland.
Indeed, it is not even clear what is required of a mesh such that it
would be considered continuous. The term "mesh" implies that the structure
is to have openings or voids therein, as illustrated in Appellant's Figure 9,
for example. Having regions merged without discontinuities is also not
something for which a meaning can be gleaned from Appellant's original
disclosure.
A rejection under 35 U.S.C. § 112, second paragraph, based on
indefiniteness for not being able to determine the metes and bounds of these
limitations would possibly also be appropriate. However, given that the
Specification as filed, including the drawing figures, are utterly devoid of
any description that provide support for the limitations as being in
Appellant's possession, the rejection based on lack of adequate written
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description under 35 U.S.C. § 112, first paragraph, is believed to be most
appropriate.
DECISION
The rejection of claims 41, 43, and 44 under 35 U.S.C. § 103(a) as
being unpatentable over Howland is reversed.
Claims 41, 43, and 44, are rejected, in a new ground of rejection
pursuant to 37 C.F.R. § 4I.50(b ), under 35 U.S.C. § 112, first paragraph, as
failing to meet the written description requirement thereof.
This Decision contains new grounds of rejection pursuant to 37 C.F.R.
§ 4I.50(b ). Section 4I.50(b) provides "[a] new ground of rejection pursuant
to this paragraph shall not be considered final for judicial review." Section
41.50(b) also provides:
When the Board enters such a non-final decision, the appellant,
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 prosecution will be
remanded to the examiner. The new ground of rejection is
binding upon the examiner unless an amendment or new
Evidence not previously of Record is made which, in the opinion
of the examiner, overcomes the new ground of rejection
designated in the decision. Should the examiner reject the claims,
appellant may again appeal to the Board pursuant to this subpart.
(2) Request rehearing. Request that the proceeding be
reheard under§ 41.52 by the Board upon the same Record. The
request for rehearing must address any new ground of rejection
and state with particularity the points believed to have been
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misapprehended or overlooked in entering the new ground of
rejection and also state all other grounds upon which rehearing
is sought.
Further guidance on responding to a new ground of rejection can be
found in the Manual of Patent Examining Procedure§ 1214.01.
No time period for taking any subsequent action in connection with
this appeal may be extended under 3 7 C.F .R. § 1.13 6( a )(1 )(iv).
REVERSED
37 C.F.R. § 4I.50(b)
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