11606289 (P.T.A.B. Jan. 31, 2013)

Ex Parte Smires et al

Patent Trial and Appeal BoardJan 31, 2013

11606289 (P.T.A.B. Jan. 31, 2013)

UNITED STATES PATENT AND TRADEMARK OFFICE 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 APPLICATION NO. FILING DATE FIRST NAMED INVENTOR ATTORNEY DOCKET NO. CONFIRMATION NO. 11/606,289 11/30/2006 Daniel T. Smires V003-DS 6902 66989 7590 01/31/2013 VONAGE 23 MAIN STREET HOLMDEL, NJ 07733 EXAMINER GOYEA, OLUSEGUN ART UNIT PAPER NUMBER 3687 MAIL DATE DELIVERY MODE 01/31/2013 PAPER 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. PTOL-90A (Rev. 04/07) UNITED STATES PATENT AND TRADEMARK OFFICE ____________ BEFORE THE PATENT TRIAL AND APPEAL BOARD ____________ Ex parte DANIEL T. SMIRES, MARY GRIKAS, and JYOTSNA KACHROO ____________ Appeal 2010-009794 Application 11/606,289 Technology Center 3600 ____________ Before MURRIEL E. CRAWFORD, HUBERT C. LORIN, and ANTON W. FETTING, Administrative Patent Judges CRAWFORD, Administrative Patent Judge. DECISION ON APPEAL Appeal 2010-009794 Application 11/606,289 2 STATEMENT OF THE CASE Appellants seek our review under 35 U.S.C. § 134 of the Examiner’s final decision rejecting claims 1 to 25. We have jurisdiction over the appeal under 35 U.S.C. § 6(b). We REVERSE. Claim 1 is illustrative: 1. A method for automated inventory tracking and device authentication using device identity-containing information associated with at least one device that is part of an inventory, the method comprising: accepting initial device identity-containing information from an inventory origination point to a first sales distribution point; accepting additional device identity- containing information from each instance of a new and successive sales distribution point as said at least one device moves through a supply chain; comparing a device ID of said at least one device subsequently connected to an end user networking access point to said accepted initial and additional information; and authenticating said at least one device subsequently connected to an end user networking access point based upon said accepted initial and additional information. Claims 1 and 6 to 11 are rejected under 35 U.S.C. § 103(a) as being unpatentable over Valiulis (US 6,317,028 B1; iss. Nov. 13, 2001) in view of Self (US 2007/0215685 A1; iss. Sep. 20, 2007). Appeal 2010-009794 Application 11/606,289 3 Claims 2 to 5 and 12 are rejected under 35 U.S.C. § 103(a) as being unpatentable over Valiulis in view of Self and further in view of Koepke (US 2007/0121803 A1; pub. May 31, 2007).1 ANALYSIS The Appellants argue that Valiulis does not disclose the step of accepting additional device identity-containing information from each instance of a new and successive sales distribution point. We agree. The Examiner relies on column 13, lines 66 to 67 and column 14, lines 1 to 18 of Valiulis for teaching this subject matter (Ans. 5). We find that the portions of Valiulis relied on by the Examiner discloses sending device identity-containing information to a central registration authority during the manufacturing process, or when completed goods are being shipped from the original manufacturer to the first distributor in a supply chain. The portions of Valiulis relied on by the Examiner fail to disclose or suggest that this information would be sent from each instance of a new and subsequent sales distribution point as inventory moves through a supply chain. In view of the forgoing, we will not sustain the Examiner’s rejections of claim 1 and claims 2 to 12 dependent thereon. We will also not sustain these rejections as they are directed to claim 13 and claims 14 to 24 dependent thereon because claim 13 recites “accepting additional device 1The Examiner has not listed claims 13 to 25 in the statement of the rejections. However, since the Examiner discusses these claims in the body of the Answer and the Appellants respond to the rejection of these claims, we will treat the Examiner’s omission as a typographical error. Appeal 2010-009794 Application 11/606,289 4 identity-containing information from each instance of a new and successive sales distribution point said at least one device moves through a supply chain.” We note that claim 25 recites similar limitations and the Examiner relies upon the same rationale to reject claim 25 (see Ans. 12). We further note that claim 25's limitations are recited in means-plus-function format and that the Examiner presents no analysis as to whether 35 U.S.C. § 112, sixth paragraph, applies and to whether the corresponding structure or an equivalent is taught by the prior art. As such, the Examiner has failed to establish a prima facie case of obviousness in regard to this claim. Accordingly, we will not sustain the rejection as it is directed to claim 25. DECISION The decision of the Examiner is reversed. REVERSED hh