Application of Riddle

• Decision Date: 11 March 1971
• Docket Number: Patent Appeal No. 8457.
• Citation: 169 USPQ 45,438 F.2d 618
• Parties: Application of John B. RIDDLE, Arndt B. Bergh and Charles O. Forge.
• Court: U.S. Court of Customs and Patent Appeals (CCPA)

169 USPQ 45, 438 F.2d 618 (1971)

Application of John B. RIDDLE, Arndt B. Bergh and Charles O. Forge.

Patent Appeal No. 8457.

United States Court of Customs and Patent Appeals.

March 11, 1971.

Karl A. Limbach, John P. Sutton, Limbach, Limbach & Sutton, San Francisco, Cal., attorneys of record, for appellant.

S. Wm. Cochran, Washington, D. C., for the Commissioner of Patents. Jere W. Sears, Washington, D. C., of counsel.

Before RICH, ALMOND, BALDWIN and LANE, Judges, and FORD, Judge, United States Customs Court, sitting by designation.

BALDWIN, Judge.

This appeal is from the decision of the Patent Office Board of Appeals affirming the examiner's rejection of the sole claim in appellants' application¹ under 35 U.S.C. § 103 as obvious in view of Smith.²

THE INVENTION

The invention relates to a method for determining whether or not a sample paper bill is a genuine Federal Reserve Note. Those notes, said to constitute most of the paper money now in circulation in the United States, have one side printed in green ink. The other side, printed mostly in black ink, has a seal imprinted on it to the left of the portrait, which seal denotes the Federal Reserve Bank that issued the note. While the major portion of the printing on the black side, including a pattern of lines forming the background for the portrait, is printed with magnetic (magnetizable) ink, the ink used to impress the seal is non-magnetic. Appellants' method utilizes these characteristics in a manner readily apparent from the claim, which reads:

1. The method of recognizing a sample bill as a valid piece of U. S. paper money which comprises: magnetically analyzing the ink in a predetermined area on the obverse side of the sample bill; magnetically analyzing the Federal Reserve Seal on the sample bill, and rejecting the sample bill as a valid piece of U. S. currency where magnetic ink is either not found in said predetermined area or is found in the area of the Federal Reserve Seal.

THE REJECTION

Smith states that certain portions of the paper currency of the United States are printed with ink that has magnetic properties. In particular, the reference points out that the backgrounds of darker tone which set off the portraits distinctive of the denomination of the currency are formed from black vertical and horizontal lines, which are "usually" formed from such ink. The patent discloses a method for recognizing authentic bills which includes testing to determine whether the aforementioned background area of a sample has the expected magnetic properties.

On the basis of the Smith disclosure, the examiner took the position that it would be obvious to add to the Smith test of an area known to be printed in magnetic ink, the additional step of testing for the presence of magnetic ink in any area known to be printed in nonmagnetic ink, including the area of the Federal Reserve Seal. In sustaining the rejection, the board commented:

We are struck by the obviousness of appellants\' method from the very fact that bills, inked in the manner referred to by appellants, clearly dictate appellants\' method of examination. To determine whether or not bills are properly inked, one would obviously not only test the known magnetic areas for traces of magnetism, but also the non-magnetic areas for a determination of the absence of magnetism. Appellants state that a counterfeiter would assume that the black seal to the left of the President\'s photograph is printed with magnetic ink because it is printed with black ink. We fail to see how this argument supports patentability. It is equally obvious to us that the green seal to the right of the photograph might be selected or any of the other numerous printed areas of a bill. To be certain one may well examine all portions of a bill.

The Smith et al. patent discloses a method of detecting magnetic ink on bills and although its specific application is to the background of the President\'s photograph, the broader aspects of this disclosure are suggestive of testing any or all areas for magnetism, including those known to be free of magnetic ink.

OPINION

We agree with the examiner and the board that the claimed method is obvious in view of Smith. That patent not only teaches that portions of paper currency are printed in magnetic ink, but also that "it is the ink in the black face that is magnetic." It also states that the magnetic properties of the ink are "limited" and discloses that the test apparatus be designed to reject any spurious bills that have "unduly strong magnetic ink" as well as any that have "insufficiently strong magnetic ink." With Smith's disclosure before him, a person of ordinary skill in the art who...