Ex Parte Chanez et alDownload PDFPatent Trial and Appeal BoardAug 14, 201812405791 (P.T.A.B. Aug. 14, 2018) Copy Citation UNITED STA TES p A TENT AND TRADEMARK OFFICE APPLICATION NO. FILING DATE 12/405,791 03/17/2009 145992 7590 08/16/2018 ALCS Law Dept. - Product and IP c/o BUCHANAN, INGERSOLL & ROONEY PC POST OFFICE BOX 1404 ALEXANDRIA, VA 22313-1404 UNITED ST A TES OF AMERICA FIRST NAMED INVENTOR Patrick Chanez 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. 1021238-001137 4226 EXAMINER MAI, THIENT ART UNIT PAPER NUMBER 2887 NOTIFICATION DATE DELIVERY MODE 08/16/2018 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): ADIPDOC 1@BIPC.com j ane.fallgren@bipc.com PTOL-90A (Rev. 04/07) UNITED STATES PATENT AND TRADEMARK OFFICE BEFORE THE PATENT TRIAL AND APPEAL BOARD Ex parte PA TRICK CHANEZ, ALAIN SAGER, PHILIPPE CHATELAIN, andERWANFRADET Appeal2017-010544 Application 12/405,791 Technology Center 2800 Before CATHERINE Q. TIMM, JAMES C. HOUSEL, and LILAN REN, Administrative Patent Judges. TIMM, Administrative Patent Judge. DECISION ON APPEAL STATEMENT OF THE CASE Pursuant to 35 U.S.C. § 134(a), Appellants 1 appeal from the Examiner's decision to reject claims 1, 3-5, 7, 9-24, 27, and 28 under 35 U.S.C. § 101 as directed to non-statutory subject matter. We have jurisdiction under 35 U.S.C. § 6(b). We REVERSE and enter a NEW GROUND OF REJECTION. 1 Appellants identify Philip Morris USA Inc. as the real party in interest. Appeal Br. 1. Appeal2017-010544 Application 12/405,791 The invention relates to methods and apparatus for identifying, authenticating, tracking, and tracing manufactured items in containers. Spec. ,r 1. The claims are of diverse scope. They range from a method for identifying manufactured items in containers with steps run in a processor and in a host (see, e.g., claim 1) to a database for authenticating manufactured items stored as a plurality of items in containers (see, e.g., claim 28). Both the Examiner and Appellants treat claim 1 as representative. We reproduce claim 1 below with labels for each clause: 1. A method for identifying manufactured items in containers, each container suitable for containing a plurality of units, the manufactured items being produced on a production line having a processor configured to generate indicia for each unit and each container, and control a marking of each unit and each container with the indicia, the method comprising the steps of: [ 1] in the processor: [ 1 a] randomly generating unique first unit identifiers and unique second unit identifiers; [ 1 b] associating each first unit identifier with one of the units, wherein each first unit identifier is an encrypted value that identifies production details including at least a code generator of the production line and a counter associated with a production run of the production line; [ 1 c] tracking each of the plurality of units as each unit is allocated to a respective container during a production process; [Id] uniquely identifying each container storing the plurality of units by marking each container with one of the second unit identifiers; and [ 1 e] when the plurality of units allocated to a respective container is established, sending, over a network, the 2 Appeal2017-010544 Application 12/405,791 production details of the first unit identifiers associated with the units allocated to the respective container to a database, wherein the first unit identifiers are not stored in the database and the production details identify at least one range of units stored in the respective container, and wherein in the database, the second unit identifier is linked to the at least one range using only the production details of first and last units produced during the production run; [2] in the host: [2a] receiving a first identifier of a respective unit; and [2b] comparing production details included in the received first identifier against the production details of the at least one range of units allocated to the second unit identifiers stored in the database and associated with the respective containers, [2c] returning a result of the comparison to a sender of the first identifier over the network for authenticating the respective unit. Appeal Br., claims appendix 1-2. OPINION At the outset, we note that the Examiner did not provide any analysis for any claim other than claim 1. Instead, the Examiner treats claim 1 as representative. Final 2. And Appellants, following the Examiner's lead, do not discuss any claim other than claim 1. Appeal Br. 5-9; Reply Br. 1-3. We note that independent claims 10, 27, and 28 are broader in scope than claim 1. Thus, claim 1 is not representative for those claims, particularly, for claims 27 and 28, which are directed to a database (claim 28) and a method occurring in a database ( claim 2 7) or the claims depending from 3 Appeal2017-010544 Application 12/405,791 claims 27 and 28. But having no specific analysis or arguments directed to claims 10, 27, and 28, or the claims depending therefrom, we do not treat them separately. We focus, as did the Examiner and Appellants, on claim 1. Section 101 states that "[ w ]hoever invents or discovers any new and useful process, machine, manufacture, or composition of matter, or any new and useful improvement thereof, may obtain a patent therefor, subject to the conditions and requirements of this title." These listed statutory classes, however, are to be distinguished from the basic tools of scientific and technological work. "Phenomena of nature, though just discovered, mental processes, and abstract intellectual concepts are not patentable, as they are the basic tools of scientific and technological work." Mayo Collaborative Servs. v. Prometheus Labs., Inc., 566 U.S. 66, 70-72 (2012) (quoting Gottschalkv. Benson, 409 U.S. 63, 67 (1972)). Thus, a claim that, due to the drafting efforts of the applicant, appears to fit into one of the statutory classes, but, in fact, is so untied to a concrete solution to a technical problem that it would pre-empt others from making and using the basic tools of scientific and technological work, is not patentable. Alice Corp. Pty. v. CLS Bank Int'!, 134 S. Ct. 2347, 2354--55, 2357 (2014); see also Interval Licensing LLC v. AOL, Inc., No. 2016-2502, 2018 WL 3485608, at *5 (Fed. Cir. July 20, 2018) ("a claimed invention must embody a concrete solution to a problem having 'the specificity required to transform a claim from one claiming only a result to one claiming a way of achieving it."' ( quoting SAP 4 Appeal2017-010544 Application 12/405,791 Am., Inc. v. InvestPic, LLC, 890 F.3d 1016, 1021-22 (Fed. Cir. 2018) ( collecting cases)). In Alice, the Supreme Court extended a framework that had been used in Mayo Collaborative Servs. v. Prometheus Labs., Inc., 566 U.S. 66, 78 (2012) for distinguishing claims pre-empting laws of nature, natural phenomena, and abstract ideas from claims amounting to patent-eligible applications of those concepts. Alice, 134 S. Ct. at 2355. As stated in Alice: First, we determine whether the claims at issue are directed to one of those patent-ineligible concepts. If so, we then ask, "what else is there in the claims before us?" To answer that question, we consider the elements of each claim both individually and as an ordered combination to determine whether the additional elements transform the nature of the claim into a patent-eligible application. We have described step two of this analysis as a search for an "inventive concept"-i. e., an element or combination of elements that is sufficient to ensure that the patent in practice amounts to significantly more than a patent upon the ineligible concept itself. Alice, 134 S. Ct. at 2355 (internal quotation marks and citations to Mayo omitted). As stated above, in the first step of the framework, we must determine "whether the claims at issue are directed to one of those patent-ineligible concepts." Id. "[T]he 'directed to' inquiry applies a stage-one filter to claims, considered in light of the specification, based on whether 'their character as a whole is directed to excluded subject matter."' Enfish, LLC v. Microsoft Corp., 822 F.3d 1327, 1335 (Fed. Cir. 2016) (quoting Internet Patents Corp. v. Active Network, Inc., 790 F.3d 1343, 1346 (Fed. Cir. 2015)). To answer the "directed to" question we must understand the character of claim 1 as a whole. See Bancorp Servs., L.L. C. v. Sun Life 5 Appeal2017-010544 Application 12/405,791 Assur. Co. of Canada (US.), 687 F.3d 1266, 1273-74 (Fed. Cir. 2012) ("determination of patent eligibility requires a full understanding of the basic character of the claimed subject matter."). In the present case, considering claim 1 in light of the Specification to determine the character of claim 1 as a whole is not possible because the claim is indefinite under 35 U.S.C. § 112 ,r 2. Thus, we enter a new ground of rejection of claim 1 under 35 U.S.C. § 112 ,r 2 and decline to reach the 35 U.S.C. § 101 rejection. Our reasons follow. Claim 1 is recited as a method for identifying manufactured items in a container that is suitable for containing a plurality of units. The written description of the Specification describes a process in which the units are cartons 101 and the containers are shipping cases 103. Spec. ,r 44; Fig. 1. The cartons 101 are supplied with indicia and packed into the shipping cases 103 in a production line that monitors which cartons are allocated to which shipping case. Spec. ,r 61; Fig. 2. The body of claim 1 recites steps that occur "in the processor" and "in the host." The phrase "in the processor" refers back to "a processor configured to generate indicia for each unit and each container, and control a marking of each unit and each container with the indicia." First, we note that the Specification does not disclose "a processor" at all much less "a processor configured to generate indicia ... and control a marking ... " The best we can surmise is that "processor" is used as a generic term for computer hardware or software that performs the steps recited as occurring "in the processor." It follows then that all the steps occurring "in the processor" must be information processing steps. But 6 Appeal2017-010544 Application 12/405,791 some of the steps recited in claim 1 appear to be physical acts done on the production line rather than information processing steps that could be performed in a processor. Steps 1 b-1 d appear to refer to such physical acts. Step 1 d, the step of "uniquely identifying each container storing the plurality of units by marking each container with one of the second unit identifier" requires marking containers and units. The act of marking appears to be an act of physically placing the second unit identifier (shipping case identifier 103a) onto the container (shipping case 103) by, for instance, applying a label onto the shipping case 103. See Spec. ,r 16 ( describing marking each container with a container identifier); ,r 36 (describing the means for uniquely identifying each container as comprising means for marking each container with the container identifier); ,r,r 44--45 (describing containers (shipping case 103) having an identifying label 105 with identifiers 107 and 109 thereon). Because this physical marking step described in the written description cannot be the information processing step of step 1 d, we cannot determine what information process is to occur pursuant to step 1 d. Arguably, step 1 b has a similar problem. The associating step of claim 1 requires associating each first unit identifier ( carton identifier 101 a) with one of the units ( carton 101 ). This could refer to a step of placing carton identifier 101a onto the carton 101 by, for instance, applying a label with a barcode onto the carton 101. See Spec. ,r 60 ("Each carton 101 is applied with a carton identifier 101 a ( either directly or onto packaging or a label)." But such an act of applying a label onto a carton is not an act that can occur in a computer processor. A computer processor cannot perform 7 Appeal2017-010544 Application 12/405,791 the physical act of associating the first unit identifier (carton identifier 101a) with a unit ( carton 101 ), it can only associate information. The written description discloses a different associating step. Specifically, the written description discloses "[i]n the database, each carton identifier is linked to the associated shipping case identifier and each shipping case identifier is linked to the associated carton identifiers." Spec. ,r 6 (emphasis added); see also Spec. ,r 51, 57. But this is not what is claimed. The associating step could be referring to a different information processing step, but it is unclear what step that might be. The tracking step ( step 1 c) is confusing as well because it is unclear what information process is to be occurring in the processor according to this step. The written description discusses tracking as referring to the monitoring of movement, location, and time as units are transported and stored and that such tracking is particularly useful when units and containers may be passing through shippers, delivery companies, importers, and distributors on their way to customers. Spec. ,r 9. This location-to-location tracking appears to rely on information stored in the host, not in the processor, and the written description is silent with regard to tracking during the step of allocating the units to the container on the production line. See Spec. ,r 21 ( disclosing arranging the host to store a location of the unit and a previously read location of the unit and using this information to track the units from location-to-location). Moreover, step 1 e, the step of "sending, over a network, the production details of the first unit identifiers," is listed as a step occurring in the processor, but this step occurs "over a network," not "in" the processor. 8 Appeal2017-010544 Application 12/405,791 We also note that "the host" has no antecedent basis in claim 1 and the presence of a host is not implied or inherent to any of the structures previously recited in claim 1. Thus, it is not clear what "the host" is referring back to. Thus, "the host" as used in claim 1 is indefinite. Further, it is not clear what is meant by "randomly generating unique first unit identifiers." Step 1 b of claim 1 defines the first unit identifier as "an encrypted value that identifies production details including at least a code generator of the production line and a counter associated with a production run of the production line." From the written description, it appears that the carton identifier portion of the first unit identifiers might be randomly generated (see Spec. ,r 54 (Table 2), but even that is speculation as the written description is silent as to how the carton identifier is generated and the carton identifier portion is not specifically recited in the claim. The production date and time and the counter are not randomly generated. See Table 2. And it is unclear how an encrypted value can be randomly generated as it must have some sort of key to decode the encryption. Also, the written description does not describe processing steps occurring in one processor separated from steps occurring in a host in the same terms as recited in the claim. This adds a further roadblock to understanding the metes and bounds of the claim. As a result of the above, the claim does not set out and circumscribe the method of information processing with a reasonable degree of precision and particularity. Nor do Appellants help the matter. Their summary of the claimed invention does not properly map the claim to the written description of the 9 Appeal2017-010544 Application 12/405,791 Specification. Appeal Br. 2. For example, Appellants indicate that step la is supported in Specification paragraph 5. Id. However, nowhere in Specification paragraph 5, or indeed elsewhere, is a step of randomly generating unique first unit identifiers and unique second unit identifiers described. Because the claim is indefinite and, particularly, because it appears to be directed to information processing but recites physical steps that cannot be run "in a processor," we cannot determine what the claim is "directed to" as required by Alice. Thus, we do not reach the 35 U.S.C. § 101 rejection. To do so would require inappropriate speculation as to the meaning of claim terms and assumptions as to the scope of claim 1. In re Steele, 305 F .2d 859, 134 USPQ 292 (CCPA 1962). CONCLUSION In summary, we reject claim 1 under 35 U.S.C. § 112 ,r 2 as indefinite. We do not review the other claims for indefiniteness. We procedurally reverse the Examiner's rejection of claims 1, 3-5, 7, 9-24, 27, and 28 under 35 U.S.C. § 101 without reaching the merits of this rejection. DECISION The Examiner's decision is reversed, but a new ground of rejection entered. TIME PERIOD FOR RESPONSE 10 Appeal2017-010544 Application 12/405,791 This decision contains a new ground of rejection pursuant to 37 C.F.R. § 4I.50(b). 37 C.F.R. § 4I.50(b) provides "[a] new ground of rejection pursuant to this paragraph shall not be considered final for judicial review." 37 C.F.R. § 4I.50(b) also provides that 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 proceeding will be remanded to the examiner .... (2) Request rehearing. Request that the proceeding be reheard under § 41.52 by the Board upon the same record .... REVERSED; 37 C.F.R. § 4I.50(b) 11 Copy with citationCopy as parenthetical citation