Ex Parte Berson et al

Board of Patent Appeals and Interferences

May 3, 2002

08886516 (B.P.A.I. May. 3, 2002)

The opinion in support of the decision being entered today was not written
for publication and is not binding precedent of the Board.
Paper No. 11
UNITED STATES PATENT AND TRADEMARK OFFICE
____________
BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
____________
Ex parte WILLIAM BERSON and CLAUDE ZELLER
____________
Appeal No. 2000-1185
Application No. 08/886,516
____________
ON BRIEF
____________
Before JERRY SMITH, DIXON, and SAADAT, Administrative Patent
Judges.
SAADAT, Administrative Patent Judge.
DECISION ON APPEAL
This is a decision on appeal from the Examiner’s final
rejection of claims 1 through 3 and 5 through 11, which are all
of the claims pending in this application.
We reverse.
BACKGROUND
Appellants’ invention relates generally to a method of
identifying the source of an article of manufacture and more
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Application No. 08/886,516
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specifically, to a label which includes digitally signed
information for authenticating the article. The label includes
various fields containing scannable and digitally signed
verifying information such as description, authorized provider
and expiration date of the article (Specification, page 4). The
label further contains an unreproduceable pattern of which a
tangible representation is digitally signed and incorporated in
one of the fields along with the verifying information
(Specification, page 5). Examples of the unreproduceable pattern
are randomly distributed magnetic fibers and marks on the label.
The information is digitally signed using the private key of a
public/private key pair while the verification of the information
may be achieved by the public key made available to those who
wish to validate the source of the article (Specification, page
6).
Representative independent claim 1 is reproduced as follows:
1. A method for verifying the source of an article of
manufacture, said method comprising the steps of:
a) preparing a label, said label comprising an
unreproduceable pattern and information relating to said
article;
b) describing said unreproduceable pattern and
including said description with said information relating to
said article;
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c) encrypting at least a portion of said
information relating to said article;
d) securely associating said article, said
label, and a tangible representation of said encrypted
information.
The prior art references of record relied upon by the
Examiner in rejecting the appealed claims are:
Huddleston 3,701,165 Oct. 31, 1972
Pastor 4,949,381 Aug. 14, 1990
Moore 5,592,561 Jan. 7, 1997
Salive et al. (Salive) 5,607,187 Mar. 4, 1997
Claims 1, 2, 10 and 11 stand rejected under 35 U.S.C. § 103
as being unpatentable over Moore in view of Salive. Claim 3
stands rejected under 35 U.S.C. § 103 as being unpatentable over
Moore in view of Salive and further in view of that which is well
known in the art. Claim 5 stands rejected under 35 U.S.C. § 103
as being unpatentable over Moore in view of Salive and further in
view of Huddleston. Claims 6 through 9 stand rejected under 35
U.S.C. § 103 as being unpatentable over Moore in view of Salive
and further in view of Pastor.
Rather than reiterate the conflicting viewpoints advanced by
the Examiner and Appellants regarding the above-noted rejections,
we make reference to the answer (Paper No. 10, mailed November
26, 1999) for the Examiner’s complete reasoning in support of the
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rejections, and to the brief (Paper No. 9, filed October 27,
1999) for Appellants’ arguments thereagainst.
OPINION
In reaching our decision in this appeal, we have given
careful consideration to Appellants’ specification and claims, to
the applied prior art references, and to the respective positions
articulated by Appellants and the Examiner. As a consequence of
our careful review of the evidence before us, we do not agree
with the Examiner that the claims are properly rejected under 35
U.S.C. § 103. Accordingly, we reverse.
With respect to the rejection of claims 1, 2, 10 and 11
over the combination of Moore and Salive, Appellants argue that
neither reference teaches providing an unreproduceable pattern
and encrypted information describing the pattern on a label and
therefore, cannot suggest the claimed method of verifying
authenticity. Appellants further point out that Moore teaches
away from the claimed unreproduceable pattern since Moore’s
patterns are not unobtainable as the type of light suitable for
detecting the dye used in the pattern is disclosed (Brief, pages
11 & 12). Additionally, Appellants argue that Salive does not
support the rejection since the reference is directed to
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capturing data from labels affixed to multiple articles in a
single operation and not prevention of counterfeiting (Brief,
page 12).
The Examiner responds to Appellants’ arguments by stating
that Moore’s printed identifier may be reproduced only after one
detects/locates the mark, produces the specific chemical agent
and is capable of duplicating the mark. Additionally, the
Examiner points out that after the mark is read, the information
must be decoded (Answer, page 7). The Examiner further notes
that Moore and Salive are pertinent to the particular problem
with which Appellants are concerned and address the process of
tracking articles by labeling them (Answer, pages 7 & 8).
To resolve the issue of whether the “undetectable mark”
disclosed by Moore is the same as the claimed “unreproduceable
pattern and encrypted information describing it on a label,” we
must first determine the scope of the claim. Claims will be
given their broadest reasonable interpretation consistent with
the specification, and limitations appearing in the specification
are not to be read into the claims. In re Etter, 756 F.2d 852,
858, 225 USPQ 1, 5 (Fed. Cir. 1985). The inventor may define
specific terms used to describe invention, but must do so “with
reasonable clarity, deliberateness, and precision” and, if done,
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must “‘set out his uncommon definition in some manner within the
patent disclosure’ so as to give one of ordinary skill in the art
notice of the change” in meaning. In re Paulsen, 30 F.3d 1475,
1480, 31 USPQ2d 1671, 1674 (Fed. Cir. 1994)(quoting Intellicall,
Inc. v. Phonometrics, Inc., 952 F.2d 1384, 1387-88, 21 USPQ2d
1383, 1386 (Fed. Cir. 1992).
We note that Appellants’ claim 1 recites
a) ... said label comprising an unreproduceable
pattern and information relating to said article;

b) describing said unreproduceable pattern and
including said description with said information ...;
c) encrypting at least a portion of said information
....[Emphasis added.]
Claim 1 associates with an article a label that comprises
the information related to the article as well as an
unreproduceable pattern. Additionally, the claim requires that
the information related to the article include a description of
the unreproduceable pattern and be at least partially encrypted.
Furthermore, a review of the specification (page 6, lines 1-7),
shows that the pattern may be formed by random distribution of
fibers which, absent efforts, are unreproduceable. The
specification points to a group of randomly distributed magnetic
fibers as an example of a pattern that is unreproduceable, but
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detectable. In fact, the combination of the unreproduceable
pattern and its description that is included in the encrypted
information makes the label unique to that specific article. In
other words, both an unreproduceable pattern and encrypted
article information containing a description of the pattern are
included in the label and must be verified together in order to
determine authenticity.
In rejecting claims under 35 U.S.C. § 103, the Examiner
bears the initial burden of presenting a prima facie case of
obviousness. See In re Rijckaert, 9 F.3d 1531, 1532, 28 USPQ2d
1955, 1956 (Fed. Cir. 1993). In doing so, the Examiner also has
the burden of producing factual basis either supported by
teachings in a prior art reference or shown to be common
knowledge of unquestionable demonstration. Our reviewing court
requires this evidence in order to establish a prima facie case.
In re Piasecki, 745 F.2d 1468, 1471-72, 223 USPQ 785, 787-88
(Fed. Cir. 1984); In re Cofer, 354 F.2d 664, 668, 148 USPQ 268,
271-72 (CCPA 1966). Furthermore, the court states in Piasecki,
745 F.2d at 1472, 223 USPQ at 788 the following:
The Supreme Court in Graham v. John Deere Co., 383 U.S.
1 (1966), focused on the procedural and evidentiary
processes in reaching a conclusion under section 103.
As adapted to ex parte procedure, Graham is interpreted
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as continuing to place the "burden of proof on the
Patent Office which requires it to produce the factual
basis for its rejection of an application under section
102 and 103" [citing In re Warner, 379 F.2d 1011, 1016,
154 USPQ 173, 177 (CCPA 1967)].
Additionally, in order to reach the conclusion that the
claimed subject matter is prima facie obvious, the Examiner must
further establish why one having ordinary skill in the art would
have been led to the claimed invention by the express teachings
or suggestions found in the prior art, or by implications
contained in such teachings or suggestions. In re Sernaker, 702
F.2d 989, 995, 217 USPQ 1, 6 (Fed. Cir. 1983). The Federal
Circuit further reasons in Para-Ordnance Mfg. Inc. v. SGS
Importers Int’l Inc., 73 F.3d 1085, 1088-89, 37 USPQ2d 1237,
1239-40 (Fed. Cir. 1995), that for the determination of
obviousness, the court must answer whether one of ordinary skill
in the art who sets out to solve the problem and who had before
him in his workshop the prior art, would have been reasonably
expected to use the solution that is claimed by Appellants.
A review of Moore shows that the reference relates to
placing an identifiable mark on goods that, upon field
inspection, determines authenticity and distribution track of
goods. We find Appellants’ summary of Moore to be reasonable and
further note that upon exposure to a specific wavelength of
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light, the otherwise unobservable mark becomes detectable and
provides encoded data related to the identity and source of the
articles. In particular, using an invisible ink or dye, a unique
pattern is applied to the articles which incorporates an encoded
input data entry comprising unique product identifiers. The
pattern become detectable upon exposure to light with a specific
wavelength and may be scanned and decoded in order to retrieve
the input data and to determine authenticity of the article (col.
5, lines 41-59 and col. 15, lines 55-64). Therefore, Moore’s
unique pattern is not separate from the article information and
itself includes encoded data corresponding to specific product
information for identifying the article and its source.
Turning to Salive, we find that the disclosed machine-
readable characters and/or coded indicia printed onto labels and
affixed to articles are detected and recorded for identification
and tracking (col. 1, lines 7-10 and 31-34). The captured image
is stored in a computer for subsequent analysis and inventory
tracking during and after handling. Therefore, Salive merely
captures the encoded image of product data available on a label
for tracking goods in a warehouse or during distribution. We
find that Salive is not concerned with verifying the authenticity
of the goods and does not teach a label having an unreproduceable
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pattern and encrypted article information that includes a
description of the pattern.
We are unpersuaded by the Examiner’s characterization of
Moore’s printed identifier as an unreproduceable pattern that is
only reproducible if it can be located and detected. In view of
the findings above, we conclude that neither Moore nor Salive
teaches or suggests an unreproduceable pattern on a label and
including its description in the article information that is
encrypted and added to the label. The invisible, but detectable
pattern of Moore itself incorporates and represents the encoded
data relating to the source and tracking of the article. The
labels in Salive are not for authentication and are detected for
merely tracking the articles. Accordingly, we reverse the
rejection of claims 1, 2, 10 and 11 under 35 U.S.C. § 103 over
Moore and Salive.
With regard to the rejection of claims 3 and 5 through 9, we
note that claims 5, 6 and 8 directly and claims 3, 7 and 9
indirectly depend from claim 1. After a review of Huddleston and
Pastor, we find that neither the references nor any well known
features relied upon by the Examiner teach or suggest a method
for verifying authenticity of an article by providing a label
having an unreproduceable pattern, including its description in
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1 Dependency of claim 6 was changed from claim 4 to claim 1
following the cancellation of claim 4 by the amendment filed
April 27, 1999. The change made claim 6 identical to claim 8 and
claim 7, depending from claim 6, identical to claim 9, depending
from claim 8.
information relating to the article and encrypting a portion of
the information. As pointed out by Appellants, Huddleston
provides detectable markers in various garment parts, existence
of which is sensed by the fabrication machinery causing specific
functions to be performed upon detection of each marker. Pastor
relates to electronic postage meters and determining the validity
of an encrypted postal indicia printed on a mail piece by using a
public key to decrypt and verify the data in the postal indicia.
Therefore, neither Huddleston nor Pastor can cure the
deficiencies discussed above with respect to Moore and Salive.
Accordingly, we do not sustain the rejection of dependent claims
3 and 5 through 9 under 35 U.S.C. § 103 over Moore and Salive in
view of different combinations with Huddleston or Pastor.
OTHER ISSUES
We note that claims 6 and 7 are identical to claims 8 and
9.1 When more than one claim is presented in an application,
37 CFR 1.75(b) requires that claims differ substantially from
each other. Therefore, we recommend that, prior to allowance,
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Appellants and the Examiner consider these duplicate claims and
take the necessary steps to correct the problem.
CONCLUSION
In view of the forgoing, the decision of the Examiner
rejecting claims 1 through 3 and 5 through 11 under 35 U.S.C.
§ 103 is reversed.
REVERSED
JERRY SMITH )
Administrative Patent Judge )
)
)
)
) BOARD OF PATENT
JOSEPH L. DIXON ) APPEALS
Administrative Patent Judge ) AND
) INTERFERENCES
)
)
)
MAHSHID D. SAADAT )
Administrative Patent Judge )
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MDS/ki
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Robert H. Whisker
Pitney Bowes, Inc.
Intellectual Prop. & Technology Law Dept.
35 Waterview Drive
P. O. Box 3000
Shelton, CT 06484