Ex Parte Balinsky et al

Board of Patent Appeals and Interferences

Feb 23, 2011

11481797 (B.P.A.I. Feb. 23, 2011)

UNITED STATES PATENT AND TRADEMARK OFFICE
____________

BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
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Ex parte HELEN BALINSKY, LIQUN CHEN, JAMES THOMAS
EDWARD MCDONNELL, and KEITH ALEXANDER HARRISON
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Appeal 2010-001425
Application 11/481,797
Technology Center 3600
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Before: MURRIEL E. CRAWFORD, ANTON W. FETTING, and BIBHU
R. MOHANTY, Administrative Patent Judges.

CRAWFORD, Administrative Patent Judge.

DECISION ON APPEAL1

1 The two-month time period for filing an appeal or commencing a civil
action, as recited in 37 C.F.R. § 1.304, or for filing a request for rehearing,
as recited in 37 C.F.R. § 41.52, begins to run from the “MAIL DATE”
(paper delivery mode) or the “NOTIFICATION DATE” (electronic delivery
mode) shown on the PTOL-90A cover letter attached to this decision.
Appeal 2010-001425
Application 11/481,797

2
STATEMENT OF THE CASE
This is an appeal from the final rejection of claims 1-24. We have
jurisdiction to review the case under 35 U.S.C. §§ 134 and 6 (2002).
The claimed invention is generally directed to pharmaceutical product
packaging (Spec. 1). Claim 1, reproduced below, is further illustrative of the
claimed subject matter.
1. A method of verifying the authenticity
of a product, the method comprising:
reading data stored on a data storage device
which forms part of the packaging of the product,
wherein said data comprises a random first
identifier uniquely allocated to the data storage
device and a digital signature of a parameter which
is based on at least a second identifier not
derivable from the data;
communicating with the product
manufacturer or an entity associated therewith
using the random first identifier as a reference;
receiving from the product manufacturer or
the entity associated therewith the second
identifier; and
verifying the digital signature using the
second identifier received from the product
manufacturer or the entity associated therewith.
Claims 1-3, 5, 6, 9-14, 16-18, 21 and 22 stand rejected under 35
U.S.C. § 102(b) as anticipated by Andreasson (US Pub. 2004/0046020 A1,
pub. Mar. 11, 2004); claims 7-9 stand rejected under 35 U.S.C. § 103(a) as
unpatentable over Andreasson in view of Koster (US Pub. 2005/0108044
A1, pub. May 19, 2005); claims 4, 15, and 19 stands rejected under 35
U.S.C. § 103(a) as unpatentable over Andreasson in view of Claudatos (US
Appeal 2010-001425
Application 11/481,797

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Pat. 7,239,241 B2, iss. Jul. 3, 2007); and claims 22-24 stands rejected under
35 U.S.C. § 103(a) as unpatentable over Andreasson in view of Lucas (US
Pub. 2007/0219916 A1, pub. Sep. 20, 2007).
We REVERSE.

ANALYSIS
We are persuaded that the Examiner erred in asserting that
Andreasson discloses “a digital signature of a parameter which is based on at
least a second identifier not derivable from the data” stored on the data
storage device, as recited in independent claims 1, 12, and 17 (App. Br. 8-
10). The Examiner asserts that the “‘unique serial number’” and National
Drug Code (NDC), disclosed in paragraphs [0010] and [0038] of
Andreasson, respectively correspond to the recited digital signature and
second identifier (Exam’r’s Ans. 12-14). However, paragraph [0038] of
Andreasson discloses that “[t]he information in the RFID tag 20 may include
product information, such as a serial number and/or a National Drug Code
(NDC).” Accordingly, the NDC is derivable from the data stored on RFID
tag 20, which is contrary to the aforementioned aspect of independent claims
1, 12, and 17.
The Examiner asserts that “[t]he NDC is not derivable from the data
stored on the device because it can be associated with ‘a lot number and or
expiration date,’ which are not necessarily data stored on the storage device”
(Exam’r’s Ans. 14). However, while the lot number and/or expiration date
Appeal 2010-001425
Application 11/481,797

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in Andreasson may not be stored on the storage device, the NDC itself, i.e.,
the purported second identifier, is stored on, and thus derivable from, RFID
tag 20.

REVERSED

hh

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