Ex Parte Schepers et al

Patent Trial and Appeal Board

Jul 2, 2018

12997893 (P.T.A.B. Jul. 2, 2018)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE FIRST NAMED INVENTOR
12/997,893 12/14/2010 Hendrik Jan Jozef Hubertus Schepers
24737 7590 07/05/2018
PHILIPS INTELLECTUAL PROPERTY & STANDARDS
465 Columbus A venue
Suite 340
Valhalla, NY 10595
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.
2008P00362WOUS 1015
EXAMINER
MINCARELLI, JAN P
ART UNIT PAPER NUMBER
3689
NOTIFICATION DATE DELIVERY MODE
07/05/2018 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):
patti. demichele@Philips.com
marianne.fox@philips.com
katelyn.mulroy@philips.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte HENDRICK JAN JOZEF HUBERTUS SCHEPERS and
BORIS SKORIC
Appeal2017-000997
Application 12/997,893
Technology Center 3600
Before JAMES R. HUGHES, ERIC S. FRAHM, and JOHN D. HAMANN,
Administrative Patent Judges.
FRAHM, Administrative Patent Judge.
DECISION ON APPEAL
STATEMENT OF THE CASE
Introduction
Appellants appeal under 35 U.S.C. § 134(a) from a Final Rejection of
claims 1-3 and 5-12. Claim 4 has been canceled. We have jurisdiction
under 35 U.S.C. § 6(b). We reverse the Examiner's written description and
enablement rejections of claims 1-3 and 5-12; and affirm the Examiner's
(i) anticipation rejection of claims 10 and 11, and (ii) obviousness rejection
of claims 1-3, 5-9, and 12. Therefore, because we sustain at least one
rejection as to every claim, we affirm.
Appeal2017-000997
Application 12/997,893
Appellants' Disclosed Invention
Appellants' disclosed invention relates to physical uncloneable
function (PUP) devices which are used to verify a physical condition of an
item, and are difficult to clone physically and can therefore verify
authenticity, integrity, and/or physical condition of a physical item (Title;
Abstr.; Spec. 1: 1-1 :24; Figs. 1-3). A PUP can, for example, be "a coating
on an integrated circuit containing random dielectric particles from which
local capacitance values may be measured" (Spec. 4:25-26, 5:9-17; Fig. 1 ),
and can be implemented with a radio frequency identification device (RFID)
as a passive device to sense tampering with a label (Spec. 6:6:4-23; Fig. 2;
see also Spec. 4:7-8 and Fig. 3). PUP devices can be active or passive
(Spec. 2:31-33), and are arranged to be damaged or destroyed when (i) an
article is exposed to a predetermined environmental condition (Spec. 2: 19-
22; 4:31-33; 7: 1-5); (ii) "when the item is used for first time" such as when
"opening a box" (Spec. 6:26-29); and/or (iii) "if someone has opened or
used the item" (Spec. 8:7). Appellants' disclosed and claimed invention is a
PUP device used in "an environmentally fragile label" that is "damaged ...
when exposed to a preselected undesirable environmental influence" (claims
1, 8, 10).
Exemplary Claims
An understanding of the invention can be derived from a reading of
exemplary claims 1 and 10, which are reproduced below with emphasis
added:
1. A physical uncloneable function (PUP) device
compnsmg:
an RFID arrangement comprising:
a processor,
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Application 12/997,893
communication means,
a memory, and
a PUP arrangement comprising:
an environmentally fragile label including a
random distribution of a plurality of physically detectable
particles, wherein the random distribution is achieved by
mixing preselected physically detectable particles with
main material elements of which the label is made during
the production of the label to form a characteristic PUP
pattern,
wherein said characteristic PUP pattern is unique for
each label, such that it cannot be reliably reproduced and
is therefore uniquely verifiable,
wherein said PUP pattern is configured to verify a
physical condition of said item to which said PUP device
is formed in or attached to,
wherein said physically detectable particles are
preselected such that the PUP pattern is arranged to be damaged
in the event that said item to which the PUP device is formed in
or attached to is exposed to a preselected undesirable
environmental influence that is known to cause a measurable
change in said physically detectable particles based on physical
properties of the particles,
wherein said damage does not result from human
physical contact with the PUF device
wherein said preselected undesirable environmental
influence comprises one of a chemical environmental influence,
a biochemical environmental influence, a moisture
environmental influence, a temperature environmental
influence, a light environmental influence, an electromagnetic
environmental influence, and a pressure environmental
influence.
10. A method of enabling verification of a physical
condition of an item including a PUP device attached to or
integrated within the item, the method comprising:
obtaining, by a control device, a measured response from
a PUP pattern of said item, wherein said PUP pattern
is comprised of one or more pre-selected materials and is
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Application 12/997,893
arranged to be damaged in the event said item is exposed to a
pre-selected undesirable environmental influence,
wherein said PUP pattern is a characteristic pattern that is
formed in or on an environmentally fragile label, the label
including a random distribution of a plurality of physically
detectable particles, wherein the random distribution is
achieved by mixing preselected physically detectable particles
with main material elements of which the label is made during
the production of the label to form said characteristic PUP
pattern,
wherein said characteristic PUP pattern is unique for
each label, such that it cannot be reliably reproduced and
is therefore uniquely verifiable,
wherein said PUP pattern is configured to verify a
physical condition of said item to which said PUP device
is formed in or attached to,
wherein said physically detectable particles are
preselected such that said PUF pattern is arranged to be
damaged in the event that said item to which the PUF device is
formed in or attached to is exposed to the pre-selected
undesirable environmental influence that is known to cause a
measurable change in said physically detectable particles based
on physical properties of the particles,
forming authentication data based on information derived
from the measured response from said PUP pattern,
wherein formation of said authentication data comprises:
signing a commitment C(S) by a trusted third party
with a public key to a unique identifier S, and
using a private key by the trusted third party, and
storing the signed commitment as authentication
data into a memory of the PUP device,
checking, by the control device, the authenticity of the
stored authentication data by asserting one or more
challenge response pairs to measure a single property of the
item, comprising:
generating, by the control device, at least one
random challenge for which the PUP device generates at
least one response,
sending, by the PUP device, the response back to
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Application 12/997,893
the control device,
checking, by the control device, whether the
response is correct and whether the commitment was
signed by the trusted third party, and
accepting the item as authentic as not having been
exposed to a preselected undesirable environmental
influence if the asserted one or more challenge-response
pairs are satisfied.
The Examiner's Rejections
(1) The Examiner rejected claims 1-3 and 5-12 under 35 U.S.C.
§ 112, first paragraph, as failing to provide adequate written description of
the claimed invention so as to reasonably convey to one skilled in the
relevant art that the inventors had possession of the claimed invention at the
time the application was filed (Final Act. 2-7; Ans. 2-9). The Examiner
determined that the Specification fails to (i) provide adequate written
description support for "PUP arrangements" (Final Act. 3); and (ii) disclose
a sufficient number of species sufficient to support the broadly claimed
genus as recited in independent claims 1 , 8, and 10 (Final Act. 3-7; Ans. 2-
9). Specifically, the Examiner determined that the Specification fails to
provide enough examples of what type "of 'PUP arrangements' can be
formed such that the pattern will be known to change for any given
preselected environmental influence" (Final Act. 3). Although the Examiner
recognizes the Specification discloses at least four examples of PUP
arrangements (see Ans. 3), the Examiner finds these species are only
minimally, and not adequately, described (see Final Act. 5; Ans. 3).
(2) The Examiner rejected claims 10 and 11under35 U.S.C. § 102(b)
as being anticipated by Schrijen (WO 2007 /031908 A2; published Mar. 22,
2007). Final Act. 7-13; Ans. 9-12. The Examiner's anticipation rejection is
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Application 12/997,893
based on an interpretation that the term "said item is exposed to a
preselected undesirable environmental influence" encompasses Schrijen's
disclosure of using an item for the first time (see Final Act. 8, 10-11; Ans.
10-12).
(3) The Examiner rejected claims 1-3 and 7-9 under 35 U.S.C.
§ 103(a) as being unpatentable over the combination of Schrijen and
Devadas (US 2003/0204743 Al; published Oct. 30, 2003). Final Act. 14-
27; Ans. 12-14. The Examiner relies upon Devadas as disclosing arranging
a PUP pattern to be damaged when an item is exposed to an environmental
influence that is not the result of human physical contact (Final Act. 17-18;
Ans. 13).
(4) The Examiner rejected claims 5 and 6 under 35 U.S.C. § 103(a) as
being unpatentable over the combination of Schrijen, Devadas, and Chainer
(US 6,501,390 Bl; issued Dec. 31, 2002). Final Act. 28-30.
(5) The Examiner rejected claim 12 under 35 U.S.C. § 103(a) as being
unpatentable over the combination of Schrijen and Tuyls (US 2007/0044139
Al; published Feb. 22, 2007). Final Act. 30-31.
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ISSUES
First Issue: Written Description
Based on Appellants' arguments (Appeal Br. 9-17; Reply Br. 5-9),
the following written description issue is presented:
( 1) Did the Examiner err in rejecting claims 1-3 and 5-12 as lacking
written description support for the recitation of "PUP arrangement[ s ]" on the
basis that the Specification as originally filed and supported by the priority
application did not reasonably convey to one skilled in the relevant art that
the inventor had possession of the claimed invention at the time the
application was effectively filed?
Second Issue: Anticipation
Based on Appellants' arguments (Appeal Br. 18-23, 29-30; Reply Br.
9-13), the following anticipation issue is presented: 1
(2) Did the Examiner err in rejecting claims 10 and 11 under 3 5
U.S.C. § 102(b) because Schrijen fails to disclose a method of enabling
verification of a physical condition of an item including a PUP device
attached to or integrated within the item, including arranging a PUP pattern
formed on an environmentally fragile label "to be damaged in the event that
said item to which the PUF device is formed in or attached to is exposed to
the pre-selected undesirable environmental influence," as recited in
representative claim 10 (emphasis added)?
Third Issue: Obviousness
Based on Appellant's arguments (Appeal Br. 24-29; Reply Br. 13-
1 Based on Appellants' arguments (Appeal Br. 17-23, 29-30; Reply Br. 10-
13) with regard to the anticipation rejection of claims 10 and 11, we select
claim 10 as representative of the group of claims rejected over Schrijen.
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15), the following obviousness issue is presented:2
(3) Did the Examiner err in rejecting claims 1-3 and 5-12 under 35
U.S.C. § 103(a) because the base combination of Schrijen and Devadas fails
to teach or suggest a PUP device including a PUP pattern formed on an
environmentally fragile label which "is arranged to be damaged in the event
that said item to which the PUP device is formed in or attached to is exposed
to a pre-selected undesirable environmental influence ... wherein the
damage does not result from human physical contact with the PUF device"
and "wherein the pre-selected undesirable environmental influence
comprises one of . .. a temperature environmental influence," as recited in
representative claim 1 (emphases added)?
ANALYSIS
We have reviewed the Examiner's rejections (Final Act. 2-31) in light
of Appellants' contentions in the Appeal Brief (Appeal Br. 9-30) and the
Reply Brief (Reply Br. 5-15) that the Examiner has erred, as well as the
Examiner's response to Appellants' arguments in the Appeal Brief (see Ans.
2-14).
2 Based on Appellants' arguments (Appeal Br. 24-29; Reply Br. 13-15) with
regard to the obviousness rejection of claims 1-3 and 7-9, we select claim 1
as representative of the group of claims rejected over Schrijen and Devadas.
And, because Appellants rely on the arguments presented as to claim 1 for
the patentability of claims 5 and 6 (see Appeal Br. 29), we decide the
outcome of claims 5 and 6 on the same basis as claim 1. Further, because
Appellants present no arguments as to claim 12 in the Appeal Brief (see
generally Appeal Br. 29-30), we summarily sustain the rejection of claim
12. We will not address claims 5, 6, and 12 further in our analysis.
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Application 12/997,893
First Issue: Written Description
We agree with Appellants' arguments that the Examiner erred in
rejecting claims 1-3 and 5-12 under 35 U.S.C. § 112, first paragraph, as
failing to provide an adequate written description of the invention recited in
claims 1-3 and 5-12. See Appeal Br. 9-17; Reply Br. 6-9.
The examiner ... "bears the initial burden ... of presenting
a prima facie case of unpatentability." In re Oetiker, 977, F .2d
1443, 1445 ... (Fed. Cir. 1992). Insofar as the written
description requirement is concerned, that burden is discharged
by "presenting evidence or reasons why persons skilled in the art
would not recognize in the disclosure a description of the
invention defined by the claims." [In re] Wertheim, 541 F.2d
[257], 263 (CCPA 1976)]. Thus, the burden placed on the
examiner varies, depending upon what the applicant claims. If
the applicant claims embodiments of the invention that are
completely outside the scope of the specification, then the
examiner or Board need only establish this fact to make out a
prima facie case. Id. at 263-264 ....
In re Alton, 76 F.3d 1168, 1175 (Fed. Cir. 1996) (parallel citations omitted).
Under 35 U.S.C. § 112, first paragraph, to satisfy the written
description requirement, "the disclosure of the application relied upon
[must] reasonably convey[] to those skilled in the art that the inventor had
possession of the claimed subject matter as of the filing date." Ariad
Pharm., Inc. v. Eli Lilly & Co., 598 F.3d 1336, 1351 (Fed. Cir. 2010) (en
bane) (citations omitted); see also Vas-Cath Inc. v. Mahurkar, 935 F.2d
1555, 1563-64 (Fed. Cir. 1991) (" [T]he applicant must ... convey with
reasonable clarity to those skilled in the art that, as of the filing date sought,
he or she was in possession of the invention."). In other words, the
Examiner has the initial burden of presenting evidence or reasons why
persons skilled in the art would not recognize in an applicant's disclosure a
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description of the invention defined by the claims. In re Wertheim, 541 F .2d
257, 265 (CCPA 1976).
In the instant case, the Examiner has not met this burden by merely
concluding that the Specification does not provide support for the recitation
of independent claims 1, 8, and 10 of "a PUP arrangement." This is
especially true in view of the fact that the Examiner recognizes the
Specification discloses at least four examples of PUP arrangements (see
Ans. 3).
And, because we agree with Appellants that the Specification
discloses a sufficient description of a representative number of species,
including four examples of a PUP arrangement (Appeal Br. 13-16), the
originally filed Specification reasonably conveys to one of ordinary skill in
the art that Appellant had possession of the disputed limitation recited in
independent claims 1, 8, and 10. Specifically, Appellants provide a
description of four examples of PUP arrangements, e.g., an optical PUP
arrangement, a coating PUP arrangement, an acoustical PUP arrangement,
and a silicon PUP arrangement (Spec. 4:19-30; see Appeal Br. 14). These
four examples of PUP arrangements include a description of the operation of
the coating PUF shown in Figures 1 and 2, and described in detail at page 5,
lines 9-17 and page 6, lines 8-23 of the Specification.3 Finally, we agree
with Appellants (Appeal Br. 16-17; Reply Br. 8-9) that the Specification
(see Fig. 3; Spec. 4:31-5:6; 5:18-33) describes an environmentally fragile
3 Notably, PUP arrangement 202 may preferably be a coating PUP
arrangement having a coating 102 with randomly distributed particles
104/106 (see Figs. 1and2; Spec. 5:9-12, 6:10-14), and "may be in the form
of a label in order to be easily attached to items" (Spec. 6: 11-12).
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label with random distribution of particles for a PUP arrangement.
However, we note the label particles are "painted or coated" on (Spec. 5:27),
and the PUP arrangement shown in Figure 3 and described at page 5, lines
18 through 30 of the Specification is a coating PUP.
In view of the foregoing, the disclosure of the instant application
reasonably conveys to those skilled in the art that the inventor had
possession of the claimed subject matter as of the filing date, and we do not
sustain the Examiner's written description rejection of claims 1-3 and 5-12.
Second Issue: Anticipation
We disagree with Appellants' arguments with regard to the
anticipation rejection of claims 10 and 11 over Schrijen (see Appeal Br. 17-
23; Reply Br. 10-13); and (ii) obviousness rejection of claims 1-3, 5-9, and
12 over the base combination of Schrijen and Davadas (see Appeal Br. 24-
30; Reply Br. 13-15).
As to the anticipation rejection of representative claim 10, we adopt as
our own: ( 1) the findings and reasons set forth by the Examiner in the action
from which this appeal is taken (Final Act. 7-10), and (2) the reasons set
forth by the Examiner in the Examiner's Answer in response to Appellant's
Appeal Brief (Ans. 9-12).
The anticipation issue turns on the interpretation of the term "exposed
to the pre-selected undesirable environmental influence" recited in claim 10.
Of course, claim language must be given a "broadest reasonable
interpretation consistent with the specification." See In re Sneed, 710 F.2d
1544, 1548 (Fed. Cir. 1983) (citation omitted). Appellants accordingly
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present several Specification examples (hereinafter, "Specification Examples
(1)-(6)) of pre-selected undesirable environmental influences":
(1) "International Patent Application No. W02007 /031908 [Schrijen]
describes a physical uncloneable function (PUP) device for determining
authenticity of an item, where a PUP pattern of the PUF device is damaged
when using the item for the first time" (Spec. 1 :25-27, Background of the
Invention)( emphasis added);
(2) "In accordance with the present invention, there is provided a
physical uncloneable function (PUP), comprising a PUP pattern, for
verifying a physical condition of an item, wherein said PUF pattern is
arranged to be damaged in the event that said item is exposed to a
predetermined environmental condition" (Spec. 2: 19-22)(emphasis added);
(3) exposure to a predetermined environmental condition such as
light, pressure or temperature (see Spec. 4:33-5:6);
(4) "PUP device 302 [shown in Figure 4] may be comprised within a
label attached to an item in such a way that when the item is used for the
first time the PUP pattern, with the PUP device, is destroyed, for example
[by] opening a box" (Spec. 6:26-29)( emphasis added);
( 5) "if the PUP device has been exposed to the preselected
environmental condition, the PUP pattern will be damaged" (Spec. 7:4-5);
and
( 6) "if someone has opened or used the item in such a way that the
label which comprises the PUP device, especially the PUP pattern, has been
damaged, this will be detected" (Spec. 8:7-9)( emphasis added).
We agree with Appellants that the Specification supports at least two
embodiments for PUP arrangements, including (i) use by a person, and
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(ii) exposure to a preselected undesirable environmental influence (see
Reply Br. 12). However, we find the Specification supports other
embodiments as well, including (i) opening a package/item for the first time
(see Specification Examples (1), (4), and (6), supra); and (ii) exposure to a
predetermined environmental condition such as light, pressure or
temperature (see Specification Examples (2)-(6), supra), which one of
ordinary skill in the art would understand occurs when a package/item is
opened for the first time and/or used. For example, opening a box for the
first, where the box was packaged with a label having a PUP coating, would
result in exposure to the predetermined environmental conditions of light,
pressure, and/or temperature (especially if the package were environmentally
sealed, such as in the case of dry ice packaged meats, for example).
As a result, the broadest reasonable interpretation in light of the
Specification, taken as a whole, for the term "exposed to the pre-selected
undesirable environmental influence" recited in claim 10, includes at least
the following:
(1) opening a box with a PUP coated label for the first time, thereby
exposing the item to environmental condition changes when opening a
package/item for the first time (see Specification Examples (1), (4), and (6),
supra);
(2) using an item having a PUP arrangement/coating for the first time,
thereby exposing the item to environmental condition changes (see
Specification Examples (2), (3), (5), and (6), supra); and
(3) exposing the item/label and PUP arrangement to environmental
conditions such as light, pressure, or temperature, where the conditions are
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not due to opening a box and/or using the item for the first time (see
Specification Examples (3) and (5), supra).
Because, we agree with Appellants that (i) extrinsic evidence is not
given as much weight as intrinsic evidence when interpretation claim terms,
and (ii) "in most situations, intrinsic evidence alone suffices to construe
claims" (Appeal Br. 20), and in view of Specification Examples ( 1)-(6) just
discussed, we agree with the Examiner's interpretation of the disputed claim
term (Final Act. 8; Ans. 10-12) and resultant findings regarding Schrijen
(Final Act. 7-13; Ans. 9-12), and not Appellants' less inclusive
interpretation of the disputed claim term (i.e., just environmental changes
without opening/using an item/box).
We agree with the Examiner that extrinsic evidence, such as the
dictionary definition of "environment," supports the broadest reasonable
interpretation of "exposed to the pre-selected undesirable environmental
influence" as encompassing the use or opening of an item/box for the first
time, since exposure to environmental conditions includes "'the aggregate of
surrounding things, conditions, influences; surroundings; milieu"' (Ans. 10-
11 ). And, in any event, even giving little or no probative value to the
extrinsic evidence provided by the Examiner, the intrinsic evidence alone
supports our interpretation. In this light, Appellants' arguments that the
Examiner's reliance on extrinsic evidence is in error (Appeal Br. 18-21;
Reply Br. 10-12) are not persuasive.
Appellants have not cited to a definition of "exposed to the pre-
selected undesirable environmental influence" in the Specification that
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would preclude the Examiner's broader reading. 4 Moreover, Appellants do
not provide evidence, such as expert testimony or other extrinsic evidence,
to establish that one of ordinary skill in the art would understand that the
broadest reasonable interpretation of "exposed to the pre-selected
undesirable environmental influence" does not include exposing the
item/label and PUP arrangement to environmental conditions such as light,
pressure, or temperature, where the conditions are not due to opening a box
and/or using the item for the first time. Rather, only attorney argument was
presented regarding the definition of the disputed term. See Appeal Br. 20-
23; Reply Br. 11-13. And, attorney argument is not evidence. In re
Pearson, 494 F.2d 1399, 1405 (CCPA 1974); Icon Health & Fitness, Inc. v.
Srava, 2017 WL 744548 *5 (Fed. Cir. Feb. 27, 2017). Nor can it take the
place of evidence lacking in the record. Meitzner v. Mindick, 549 F.2d 775,
782 (CCPA 1977). Therefore, we accord very little probative value to
Appellants' conclusory statements that the Specification supports an
interpretation of claim 10 that only includes environmental exposure to
conditions such as light, pressure, or temperature, and which cannot include
4 Any special meaning assigned to a term "must be sufficiently clear in the
specification that any departure from common usage would be so understood
by a person of experience in the field of the invention." Multiform
Desiccants Inc. v. Medzam Ltd., 133 F.3d 1473, 1477 (Fed. Cir. 1998); see
also Helmsderfer v. Bobrick Washroom Equip., Inc., 527 F.3d 1379, 1381
(Fed. Cir. 2008) ("A patentee may act as its own lexicographer and assign to
a term a unique definition that is different from its ordinary and customary
meaning; however, a patentee must clearly express that intent in the written
description.") (citing Phillips v. AWH Corp., 415 F.3d 1303, 1313, (Fed. Cir.
2005)).
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opening/using a box/item (i.e., human interaction), as Schrijen admittedly
discloses. 5
As a result, Appellants' arguments that Schrijen fails to disclose an
undesirable environmental influence, because the proper interpretation of
pre-selected undesirable environmental influence does not require opening a
box or using an item, but instead only requires exposure to high acceleration,
light, chemicals, moisture, acceleration, and/or pressure (Appeal Br. 20-23;
Reply Br. 11-13), are not persuasive.
For the foregoing reasons, Appellants have not demonstrated error in
the rejection of representative claim 10 and claim 11 grouped therewith.
Accordingly, the anticipation rejection is sustained.
Third Issue: Obviousness Rejections
We disagree with Appellants' arguments with regard to the
obviousness rejection of claims 1-3, 5-9, and 12 over the base combination
of Schrijen and Davadas (see Appeal Br. 24-30; Reply Br. 13-15), for at
least the reasons given regarding our interpretation of "exposed to the pre-
selected undesirable environmental influence" as encompassing the
disclosure of Schrijen, and for the following reasons.
As to the obviousness rejection of representative claim 1, we adopt as
our own: (1) the findings and reasons set forth by the Examiner in the action
from which this appeal is taken (Final Act. 14-18), and (2) the reasons set
5 Notably, Schrijen has the same assignee as the instant application,
Koninklijke Philips Electronics N. V. And, Schrijen is discloses very similar
subject matter as Appellants. For example, compare Schrijen' s Figure 1-6
(and accompanying description) to Appellants' respective Figures 1, 2, 4-7
(and accompanying description).
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forth by the Examiner in the Examiner's Answer in response to Appellant's
Appeal Brief (Ans. 12-14). We highlight and amplify certain teachings and
suggestions of Devadas as follows.
We agree with the Examiner that Devadas discloses arranging a PUP
pattern to be damaged when an item is exposed to an environmental
influence that is not the result of human physical contact, but is only the
result ofa change in temperature (see Final Act. 17-18; Ans. 12-13). We
also agree with the Examiner (Final Act. 14-18; Ans. 12-14) that the base
combination of Schrijen and Devadas thus teaches or suggests a PUP device
including a PUP pattern formed on an environmentally fragile label which
"is arranged to be damaged in the event that said item to which the PUP
device is formed in or attached to is exposed to a pre-selected
undesirable environmental influence ... wherein the damage does not result
from human physical contact with the PUF device" and "wherein the pre-
selected undesirable environmental influence comprises one of . .. a
temperature environmental influence," as recited in representative claim 1
(emphases added).
Finally, Appellants' argument (Appeal Br. 28) that Devadas teaches
away from the claimed invention is not persuasive in light of the Examiner's
cogent and well-articulated reasoning found at page 14 of the Answer.
Specifically, we agree with the Examiner that Devadas was only relied on
"for the teaching that call and response pairs vary by ambient temperature
influence" (Ans. 14), and as such, Appellants' argument that Devadas' "use
of different temperature sets of CRPs for the different temperature ranges
constitutes a compensation technique that is applied to preclude false
'damage' reporting" (Appeal Br. 28), is not persuasive. Appellants do not
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rebut this reasoning with persuasive evidence or argument in the Reply
Brief.
To the contrary, we agree with the Examiner that the collective
teachings and suggestions of Schrijen and Devadas provide a PUP device,
PUP arrangement, and label having a PUP pattern that operate to detect
damage caused by temperature changes/fluctuations that are not from human
physical contact, as recited in claim 1.
In view of all of the foregoing, we sustain the obviousness rejection of
representative claim 1, as well as claims 2, 3, 5-9, and 12 grouped therewith,
over the combination of Schrijen and Devadas.
CONCLUSIONS
(1) The Examiner erred in rejecting claims 1-3 and 5-12 as being
unpatentable under 35 U.S.C. § 112 for lack of written description support in
the Specification.
(2) The Examiner did not err in rejecting claims 10 and 11 as being
anticipated under 35 U.S.C. § 102(b) by Shrijen based on:
(a) our agreement with the Examiner's interpretation of the
term "exposed to a preselected undesirable environmental influence" (claim
10); and
(b) the fact that therefore, Schrijen discloses a method of
enabling verification of a physical condition of an item including a PUP
device attached to or integrated within the item, including arranging a PUP
pattern formed on an environmentally fragile label "to be damaged in the
event that said item to which the PUF device is formed in or attached to is
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Application 12/997,893
exposed to the pre-selected undesirable environmental influence," as recited
in representative claim 10 (emphasis added).
(3) The Examiner did not err in rejecting claims 1-3, 5-9, and 12
under 35 U.S.C. § 103(a) as being unpatentable over the combination of
Schrijen and Devadas because:
(a) Devadas discloses arranging a PUP pattern to be damaged
when an item is exposed to an environmental influence that is not the result
of human physical contact; and as a result,
(b) the base combination of Schrijen and Devadas teaches or
suggests a PUP device including a PUP pattern formed on an
environmentally fragile label which "is arranged to be damaged in the event
that said item to which the PUP device is formed in or attached to is exposed
to a pre-selected undesirable environmental influence ... wherein the
damage does not result from human physical contact with the PUF device"
and "wherein the pre-selected undesirable environmental influence
comprises one of . .. a temperature environmental influence," as recited in
representative claim 1 (emphases added).
DECISION
( 1) The Examiner's rejection of claims 1-3 and 5-12 under
35 U.S.C. § 112, first paragraph, as failing to provide adequate written
description of the claimed invention is reversed.
(2) The Examiner's anticipation rejection of claims 10 and 11 is
affirmed.
(3) The Examiner's obviousness rejections of claims 1-3, 5-9, and 12
are affirmed.
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Application 12/997,893
No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. § l .136(a)(l )(iv).
AFFIRMED
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