Ex Parte Kesavan et al

Patent Trial and Appeal Board

Jul 29, 2016

12791938 (P.T.A.B. Jul. 29, 2016)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE
121791,938 06/02/2010
75916 7590 08/02/2016
IBM AUS IPLA W (GLF)
c/o Garg Law Firm, PLLC
4521 Copper Mountain Lane
Richardson, TX 75082
FIRST NAMED INVENTOR
San jay Mecheri Kesavan
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.
AUS920100190US1 3702
EXAMINER
JASMIN, LYNDA C
ART UNIT PAPER NUMBER
3629
NOTIFICATION DATE DELIVERY MODE
08/02/2016 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):
dpandya@garglaw.com
uspto@garglaw.com
garglaw@gmail.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte SANJAY MECHERI KESA VAN,
NATARAJ NAGARATNAM, and
LOHITASHWA THYAGARAJ
Appeal2014-004506
Application 12/791,938
Technology Center 3600
Before HUBERT C. LORIN, BIBHU R. MOHANTY, and
BRADLEY B. BAY AT, Administrative Patent Judges.
BAY AT, Administrative Patent Judge.
DECISION ON APPEAL 1
STATEMENT OF CASE
Appellants2 appeal under 35 U.S.C. § 134(a) from the Examiner's
final rejection of claims 1-15. We have jurisdiction under 35 U.S.C. § 6(b).
STATEMENT OF THE DECISION
We REVERSE.
1 Our decision references Appellants' Appeal Brief ("Appeal Br.," filed July
1, 2013) and Reply Brief ("Reply Br.," filed Feb. 26, 2014), the Examiner's
Answer ("Ans.," mailed Dec. 26, 2013), and the Final Office Action ("Final
Action," mailed Feb. 1, 2013).
2 Appellants identify the real party in interest as "International Business
Machines Corporation" (Appeal Br. 2).
Appeal2014-004506
Application 12/791,938
CLAIMED INVENTION
The claimed invention relates to "improved manufacturing and
distribution to avoid counterfeit products." (Spec., para. 2). Claims 1, 5, and
10 are the independent claims on appeal. Claim 1, reproduced below with
bracketed matter added, is illustrative of the subject matter on appeal
(Appeal Br. 23, Claims App.).
1. A computer implemented method for manufacturing to
avoid a counterfeit product, the computer implemented method
compnsmg:
[1] selecting, using a processor and a memory, in a first
application executing in a first data processing system, a product
to be manufactured;
[2] determining a production volume information, the
production volume information including a number of units of
the product to be produced;
[3] sending an identifier of a manufacturer of the product,
an identifier of the product, and the production volume
information;
[ 4] receiving a plurality of sets of identifiers, each set of
identifiers including identifiers corresponding to a customer
reference number (CRN), a customer acknowledgment number
(CAN), and a merchant acknowledgment number (MAN),
wherein the CRN uniquely identifies the product, the CAN is
used by a customer for determining authenticity of the product,
and the MAN is used by a merchant for determining authenticity
of the product;
[5] uniquely associating one set of identifiers from the
plurality of sets of identifiers with one unit of the product being
produced; and
[ 6] manufacturing a unit of the product, the unit including
a corresponding set of identifiers,
[7] wherein to establish the authenticity of the unit of the
product, when the customer sends the CRN to a counterfeit
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Appeal2014-004506
Application 12/791,938
detection service, the customer receives the CAN from the
counterfeit detection service, and when the merchant sends the
CRN to the counterfeit detection service, the merchant receives
the MAN from the counterfeit detection service.
THE REJECTION3
Claims 1-15 stand rejected under 35 U.S.C. § 103(a) as being
unpatentable over Hudson (US 2003/0141358 Al, pub. July 31, 2003) and
Dameri (US 2011/0276502 Al, pub. Nov. 10, 2011).
ANALYSIS
Claim 1 requires, inter alia, three numerical identifiers: "a customer
reference number (CRN)" that uniquely identifies a product and is sent by a
customer and a merchant to a counterfeit detection service, "a customer
acknowledgment number (CAN)" that is received by the customer from the
counterfeit detection service, and "a merchant acknowledgment number
(MAN)" that is received by the merchant from the counterfeit detection
service.
The Examiner finds the CAN identifier of limitation [ 4] disclosed in
Hudson at paragraph 36 (Final Act. 5---6; Ans. 3-5, 32-33). The Examiner
finds the sending and receiving steps of limitation [7] in Dameri at
paragraphs 29 and 99-100 (Final Act. 9-12; Ans. 7-10, 35-39). According
to the Examiner, "Hudson clearly defines the CRN, MAN and CAN in its
disclosure" and "Dameri describes product authentication request
3 The rejection of claims 1, 5, and 10 under 35 U.S.C. § 112, first paragraph,
is withdrawn (Ans. 2).
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Appeal2014-004506
Application 12/791,938
operations, wherein the requests are by at least two different entities" (Ans.
39).
Appellants dispute these findings (Appeal Br. 15).
We agree with Appellants.
We have reviewed the cited portions of Hudson and Dameri, and we
see no disclosure of a customer receiving a CAN from a counterfeit
detection service when the customer sends a CRN to the counterfeit
detection service.
As noted above, the Examiner finds the claimed CAN identifier in
paragraph 36 of Hudson, which discloses that an "end customer would be
able to access the database" via the internet "to verify the authenticity and
product distribution route data of their particular product" (Hudson i-f 36). In
order to request information specific to their particular product, "the end
user would characterise the product for the database using a number
generated at the point of sale on for example a purchase receipt or
advantageously by use of a visual number incorporated on the product label"
(id.). In other words, Hudson discloses that the end user provides the
"number generated at the point of sale" or "visual number" to the database in
order to identify "their particular product," and the database responds by
providing "distribution route data" for that particular product so that the
customer can verify the authenticity of the product (id.). See also Hudson at
paragraph 106 ("[u]sing the product identification number 111 the customer
is able to select and view the appropriate product distribution route data
record and therefore confirm the authenticity of the purchased product");
paragraph 123 ("Consumer upon purchasing the Product verifies the
authenticity by, logging onto the Internet Site applicable to the Owner ...
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Application 12/791,938
and inputs the product identification code or number" and then "[h]aving
exchanged data with the Database, the Site makes available all or part of the
Product Route data for the Consumer to verify purchase detail authenticity
and thereby providing the Consumer with 100% accurate authentication of
the Product"). Thus, Hudson discloses that the customer or consumer
provides a product number to the database in the request for verification and
receives route data in return. We do not see how receiving "route data" is
equivalent to receiving "a customer acknowledgment number (CAN)" as
required by claim 1.
The Examiner's findings in Dameri do not remedy the above
deficiency. As noted above, the Examiner finds limitation [7] of claim 1 in
Dameri at paragraphs 29 and 99-100 (Ans. 38-39). In paragraph 29,
Dameri discloses a "unique sign" or "univocal sign" that is applied to each
product at the manufacturing stage. In paragraphs 99-100, Dameri describes
a consumer sending the univocal sign to a centralized database and receiving
a positive response regarding product authenticity that is accompanied by
"particular product information, both in the form of a text description and of
images of the product." We do not see how receiving a "text description"
and "images of the product" is equivalent to receiving "a customer
acknowledgment number (CAN)" as required by claim 1.
Accordingly, we do not sustain the rejection of independent claim 1 as
obvious over Hudson and Dameri. For the same reasons, we do not sustain
the rejection of claims 2--4 dependent thereon. Cf In re Fritch, 972 F.2d
1260, 1266 (Fed. Cir. 1992) ("dependent claims are nonobvious if the
independent claims from which they depend are nonobvious"). Independent
claims 5 and 10 recite similar limitations and the Examiner's rejection of
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Application 12/791,938
claims 5 and 10 as obvious over Hudson and Dameri relies on the same
erroneous findings as in claim 1. Thus, for the same reasons, we do not
sustain the rejection of independent claims 5 and 10, and claims 6-9 and 10-
15 dependent thereon.
DECISION
The Examiner's decision to reject claims 1-15 is reversed.
REVERSED
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