Ex Parte Lyons et al

Patent Trial and Appeal Board

Jun 28, 2013

11047302 (P.T.A.B. Jun. 28, 2013)

UNITED STATES PATENT AND TRADEMARK OFFICE
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BEFORE THE PATENT TRIAL AND APPEAL BOARD
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Ex parte NICHOLAS P. LYONS and NINA T. BHATTI
____________________

Appeal 2011-000230
Application 11/047,302
Technology Center 2400
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Before MAHSHID D. SAADAT, IRVIN E. BRANCH, and
PATRICK M. BOUCHER, Administrative Patent Judges.

BRANCH, Administrative Patent Judge.

DECISION ON APPEAL
Appellants appeal under 35 U.S.C. § 134(a) from a rejection of claims
1-33. We have jurisdiction under 35 U.S.C. § 6(b).
We reverse, and enter new grounds of rejection in accordance with
37 C.F.R. § 41.50(b).
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STATEMENT OF CASE
Illustrative Claim
The claims are directed to systems and methods wherein an object
having an associated tag with a memory and a unique identifier is the subject
of a transaction, and transaction information is recorded and used to encrypt
the unique identifier into a code that is then written into the memory.
Abstract. Claims 1 and 13, reproduced below, are illustrative of the claimed
subject matter:
1. A method performed with a computer readable storage
medium for recording transactional information relating to an
object including a tag having a unique identifier and memory,
the method comprising:
reading the unique identifier of the tag;
recording the transactional information relating to the
object;
encrypting the unique identifier and at least one portion
of the transactional information into a code; and
writing the code to the memory of the tag at a point of a
transaction of the object after a manufacturing of the object
including the tag having the unique identifier and memory,
wherein the transactional information is collected at the
transaction point.

13. A computer readable storage medium on which is
embedded one or more computer programs, said one or more
computer programs implementing a method for recording
transactional information relating to an object including a tag
having a unique identifier and memory, said one or more
computer programs comprising a set of instructions for:
reading the unique identifier of the tag;
recording the transactional information relating to the
object;
encrypting the unique identifier and at least one portion
of the transactional information into a code;
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writing the code to the memory of the tag at a point of a
transaction of the object after a manufacturing of the object
including the tag having the unique identifier and memory,
wherein the transactional information is collected at the
transaction point; and
setting the at least one portion of the memory to a read-
only state.
Rejections
Claims 1 and 9 stand rejected under 35 U.S.C. § 101 (Ans. 3).
Claims 1-33 stand rejected under 35 U.S.C. § 103(a) as being
unpatentable over US 7,152,047 B1, Dec. 19, 2006; filed May 24, 2000
(“Nagel”) and US 6,950,939 B2, Sep. 27, 2005; filed Oct. 15, 2001
(“Tobin”) (Ans. 4-10).

ANALYSIS
We have reviewed the Examiner’s rejections in light of Appellants’
arguments in both the Appeal Brief and Reply Brief. Rather than repeat the
arguments here, we refer to the Briefs and the Answer for the respective
positions of Appellants and the Examiner. Only those arguments actually
made by Appellants have been considered in this decision. Arguments that
Appellants did not make in the Briefs have not been considered and are
deemed to be waived. See 37 C.F.R. § 41.37(c)(1)(vii).
35 U.S.C. § 101 Rejection of Claims 1 and 9
Appellants’ arguments raise the issue of whether the Examiner erred
in rejecting claims 1 and 9 under 35 U.S.C. § 101.
The preambles of claims 1 and 9 recite “[a] method performed with a
computer readable storage medium.” The Examiner rejects the claims on
the basis that they overlap two different statutory classes of invention. Ans.
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10. Appellants argue that the claims are “clearly method claims.” Reply Br.
5.
We are persuaded that the Examiner has erred. To the extent that the
method steps and the storage medium cover two distinct statutory classes,
we agree with the Examiner. Here, however, the inclusion of “computer
readable storage medium” in the preambles, which is not thereafter referred
to in the bodies, does not negate that the claims are method claims and thus
statutory. Accordingly, we reverse the 35 U.S.C. § 101 rejection of claims 1
and 9.
35 U.S.C. § 103 Rejection
Appellants argue on pages 10-21 of the Appeal Brief that the
Examiner’s rejection of claims 1-33 is in error. Appellants’ arguments
present us with the issue of whether the Examiner erred in finding that Nagel
and Tobin render claims 1-33 obvious.
We are persuaded that the Examiner has erred.
The Examiner finds that Nagel discloses “recording the transactional
information relating to the object” as recited in claim 1 (Ans. 4, citing
Nagel’s “printed document content 2” in Figs. 1 and 2). Appellants argue
that the printed document content “does not indicate a transaction.” App.
Br. 12. We agree and accordingly reverse the rejection of claim 1 and of
claims 2-33, which similarly recite “reordering,” “collecting,” and/or
“capturing” “transaction information,” which is not taught by Nagel.

REJECTION OF CLAIM 13 UNDER 37 C.F.R. § 41.50(b)
We enter a new ground of rejection against claims 13-19 under
35 U.S.C. § 101.
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Claim 13 recites “[a] computer readable storage medium on which is
embedded one or more computer programs . . . .” The elements of claims
13-19 recite instructions of the computer programs. Appellants’
Specification states that computer programs may be embodied on a
“computer readable medium,” which includes signals. Spec., p. 17, ll. 15-
23. Accordingly, Appellants’ claims encompass a transitory storage
medium, which is not eligible for patent protection. See In re Nuijten, 500
F.3d 1346, 1356-57 (Fed. Cir. 2007). We therefore reject claims 13-19 as
directed to nonstatutory subject matter.

REJECTION OF CLAIM 1 UNDER 37 C.F.R. § 41.50(b)
We enter a new ground of rejection against claims 1, 20, and 23 under
35 U.S.C. § 103(a) as unpatentable over US 7,840,439 B2, Nov. 23, 2010
(“Junger”)1 in view of Nagel.
With respect to claim 1, Junger relates to product tracking using radio-
frequency identification (RF-ID) technology (col. 1, ll. 14-21.). Junger’s
RF-ID devices include a memory, can be attached to a product for electronic
identification, and can be “loaded with information relating to the product,”
which information can be “read, updated or supplemented as desired” (col.
1, ll. 25-45.). Junger further teaches that, at a point of sale, a product serial
number is read from the RF-ID device, which, together with transaction
information, is forwarded to a database (col. 5, ll. 9-24.). The transaction
information also may be written to the RF-ID device (col. 1, ll. 46-64.).
Accordingly, Junger teaches all elements of claim 1, except that Junger does
not teach encrypting multiple items of information into a code.

1 A copy of this newly found reference is attached to our decision.
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Nagel teaches that, at the time of the invention, asymmetric
encryption using Public Keys and Private Keys was well known (see, e.g.,
col. 16, l. 16 – col. 18, l. 55). At column 16, lines 53-57, Nagel teaches the
creation of a digital signature which is encrypted, together with a message to
a recipient, using the recipient’s Public Key. Accordingly, it would have
been obvious to encrypt a product serial number and transaction information
using asymmetric encryption as taught by Nagel in Junger’s RF-ID product
tracking system. Doing so would have been the predictable use of known
elements according to their established functions, which would not have
been beyond the skill of an ordinarily skilled artisan. See KSR Int’l Co. v.
Teleflex Inc., 550 U.S. 398, 417-418 (2007). Therefore, claim 1, together
with claims 20 and 23 which include similarly obvious recitations, are
rejected under 35 U.S.C. § 103(a) as being unpatentable over Junger and
Nagel.
The Patent Trial and Appeal Board is a review body, rather than a
place of initial examination. We have entered a new ground of rejection of
claims 1, 20, and 23. We have not, however, reviewed claims 2-19, 21, 22,
and 24-33 to the extent necessary to determine whether these claims are
unpatentable under 35 U.S.C. § 103(a) over Junger, Nagel, or in further
combination with any other prior art. In the event of further prosecution we
leave it to the Examiner to determine the patentability of claims 2-19, 21, 22,
and 24-33 in view of our findings and conclusions herein regarding claims 1,
20, and 23.

CONCLUSIONS
On the record before us, we conclude the following:
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(1) The Examiner has erred in rejecting claims 1 and 9 under 35
U.S.C. §101.
(2) The Examiner has erred in rejecting claims 1-33 under 35 U.S.C.
§ 103(a) as unpatentable over Nagel and Tobin.

DECISION
The Examiner’s decision rejecting claims 1 and 9 under 35 U.S.C.
§ 101 is reversed.
The Examiner’s decision rejecting claims 1-33 under 35 U.S.C.
§ 103(a) over Nagel and Tobin is reversed.
A new ground of rejection is entered pursuant to 37 C.F.R. § 41.50(b),
rejecting claims 13-19 under 35 U.S.C. § 101 as directed to non-statutory
subject matter.
A new ground of rejection is entered rejecting claims 1, 20, and 23
under 35 U.S.C. §103(a) as unpatentable over Nagel and Junger.
37 C.F.R. § 41.50(b) provides that “[a] new ground of rejection …
shall not be considered final for judicial review.” This section 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. . . .
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No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. § 1.136(a).

REVERSED
37 C.F.R. § 41.50(b)

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