LENOVO Enterprise Solutions (Singapore) PTE. LTD.

Patent Trials and Appeals Board

Oct 12, 2021

2021000681 (P.T.A.B. Oct. 12, 2021)

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.
14/501,192 09/30/2014 David T. Bennington XAUS920140195-US-NP 1562
61755 7590 10/12/2021
Kunzler Bean & Adamson - Lenovo
50 W. Broadway
10th Floor
Salt Lake City, UT 84101
EXAMINER
KASSIM, HAFIZ A
ART UNIT PAPER NUMBER
3623
NOTIFICATION DATE DELIVERY MODE
10/12/2021 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):
docket@kba.law
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
____________

BEFORE THE PATENT TRIAL AND APPEAL BOARD
____________

Ex parte DAVID T. BENNINGTON, JIXIONG CHEN,
THOMAS S. MAZZEO, and JUNWU SUN
____________

Appeal 2021-000681
Application 14/501,192
Technology Center 3600
____________

Before JAMES P. CALVE, NINA L. MEDLOCK, and
KENNETH G. SCHOPFER, Administrative Patent Judges.

MEDLOCK, Administrative Patent Judge.

DECISION ON APPEAL

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STATEMENT OF THE CASE
Appellant1 appeals under 35 U.S.C. § 134(a) from the Examiner’s
rejection of claims 1–18, 22, and 23. We have jurisdiction under 35 U.S.C.
§ 6(b).
We AFFIRM.
CLAIMED INVENTION
The Specification states, “[t]he present invention relates to tracking
industry commodities. More specifically, the invention efficiently tracks
industry standard commodities across a commodity supply chain, including
supplier, manufacturer, and customer” (Spec. ¶ 1).
Claims 1, 7, and 13 are the independent claims on appeal. Claim 1,
reproduced below with bracketed notations added, is illustrative of the
claimed subject matter:
1. A method comprising:
[(a)] receiving incoming material with an applied first
marking, wherein the incoming material is to be converted to at
least a portion of a manufactured product, the first marking
comprising an identifier;

1 We use the term “Appellant” to refer to “applicant” as defined in 37 C.F.R.
§ 1.42. Our decision references Appellant’s Appeal Brief (“Appeal Br.,”
filed June 24, 2020), Appeal Brief Correction (“Corrected Appeal Br.,” filed
July 7, 2020), and Reply Brief (“Reply Br.,” filed November 3, 2020), and
the Examiner’s Answer (“Ans.,” mailed September 4, 2020) and Non-Final
Office Action (“Non-Final Act.,” mailed January 31, 2020). Appellant
identifies Lenovo Enterprise Solutions (Singapore) PTE. Ltd. as the real
party in interest (Appeal Br. 2).
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[(b)] authenticating the first marking, the authenticating
comprising:
scanning the first marking with a scanning device;
and
verifying validity of the scanned first marking;
[(c)] physically applying a second marking to the
incoming material in response to the authentication;
[(d)] creating a first relationship between the first
marking and the second marking, the first relationship linking the
first marking with the second marking;
[(e)] converting the received incoming material with the
first and second markings to the manufactured product, the
manufactured product comprising the incoming material such
that the manufactured product has a different physical form than
the incoming material;
[(f)] creating a second relationship between the first
relationship and the manufactured product, the first and second
relationships providing traceability of the manufactured product
upstream and downstream of a product supply chain; and
[(g)] identifying a source of the incoming material that
forms the manufactured product after the incoming material is
converted into the manufactured product using the second
relationship in response to input from a user accessing, from data
storage, stored relationship data that is linked to the
manufactured product.
Corrected Appeal Br. 2–3 (Claims App.).
REJECTIONS
Claims 1–18, 22, and 23 are rejected under 35 U.S.C. § 112(a) as
failing to comply with the written description requirement.
Claims 1–18, 22, and 23 are rejected under 35 U.S.C. § 101 as
directed to a judicial exception without significantly more.
Claims 1–18, 22, and 23 are rejected under 35 U.S.C. § 103 as
unpatentable over Doljack (US 6,442,276 B1, issued Aug. 27, 2002),
Begelfer et al. (US 6,547,137 B1, issued Apr. 15, 2003) (“Begelfer”), and
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Pokorny et al. (US 2003/0150908 A1, published Aug. 14, 2003)
(“Pokorny”).
ANALYSIS
Written Description
Whether a specification complies with the written description
requirement of 35 U.S.C. § 112(a) is a question of fact and is assessed on a
case-by-case basis. See, e.g., Purdue Pharma L.P. v. Faulding, Inc.,
230 F.3d 1320, 1323 (Fed. Cir. 2000) (citing Vas-Cath, Inc. v. Mahurkar,
935 F.2d 1555, 1561 (Fed. Cir. 1991)). To satisfy the written description
requirement, the specification must describe the claimed invention in
sufficient detail such that one skilled in the art can reasonably conclude that
the inventor had possession of the claimed invention at the time the
application was filed. Vas-Cath, Inc., 935 F.2d at 1562–63. In particular,
the specification must describe the claimed invention in a manner
understandable to a person of ordinary skill in the art and show that the
inventor actually invented the claimed invention. Id.; see also Ariad
Pharms., Inc. v. Eli Lilly & Co., 598 F.3d 1336, 1351 (Fed. Cir. 2010).
Independent Claims 1, 7, and 13 and Dependent Claims 2–6, 8–12, 14–18,
22, and 23
Manufactured Product Has a Different Form Than the Incoming
Material
In rejecting independent claims 1, 7, and 13 under 35 U.S.C. § 112(a),
the Examiner noted that each of the independent claims recites that “the
manufactured product” has “a different physical form than the incoming
material” (Non-Final Act. 5). And the Examiner took the position that the
claims are properly rejected under § 112(a) because “there is no support . . .
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in the original disclosure of the present application for this limitation” (id.).
The Examiner rejected dependent claims 2–6, 8–12, 14–18, 22, and 23 based
on their dependence from independent claims 1, 7, and 13 (id.).
Appellant argues, and we agree, that a person of ordinary skill in the
art would reasonably understand from the Specification, including the
repeated references to converting incoming materials to a finished product,
that Appellant had possession of the claimed invention, including that the
physical form of the incoming materials is changed when the materials are
converted to a finished product, at the time the present application was filed
(Appeal Br. 11). Therefore, we do not sustain the Examiner’s rejection,
under 35 U.S.C. § 112(a), of claims 1–18, 22, and 23 on this basis.
Identifying a Source of the Incoming Material Using the Second
Relationship
The Examiner additionally rejected claims 1, 7, and 13 (and,
therefore, dependent claims 2–6, 8–12, 14–18, 22, and 23) as failing to
comply with the written description requirement based on the recitation in
claim 1 that “a source of the incoming material that forms the manufactured
product [is identified] after the incoming material is converted into the
manufactured product using the second relationship,” and the substantial
similar recitations in claims 7 and 13 (Final Act. 25).
Appellant argues, and we agree, that the Specification provides the
requisite written description support at least in paragraphs 34–36, 38–40,
and 45. Therefore, we do not sustain the Examiner’s rejection of
claims 1–18, 22, and 23 under 35 U.S.C. § 112(a) on this additional basis.
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Independent Claims 7 and 13 and Dependent Claims 8–12 and 14–18
The Examiner further rejected independent claims 7 and 13 (and,
therefore, dependent claims 8–12 and 14–18) as failing to comply with the
written description requirement based on the recitation in claim 7 of
“receiving a scan of a first marking that is applied to incoming material” and
“receiving a scan of a second marking that is applied to the incoming
material in response to the authenticating,” and the substantial similar
recitations in claim 13 (Non-Final Act. 5–6).
Appellant argues that the Specification provides the requisite written
support in at least paragraphs 24, 27, 30, and 32 (Appeal Br. 4; Reply
Br. 3–4). Yet, even if the cited paragraphs provide the requisite written
description support for “receiving a scan of a first marking that is applied to
incoming material,” we find no support there for “receiving a scan of a
second marking that is applied to the incoming material in response to the
authenticating.”
Therefore, we sustain the Examiner’s rejection of claims 7–18 under
35 U.S.C. § 112(a) on this basis.
Independent Claim 7 and Dependent Claims 8–12
The Examiner further rejected independent claim 7 (and, therefore,
dependent claims 8–12) as failing to comply with the written description
requirement based on its recitation of “creating a second relationship
between the first relationship and data regarding the manufactured product
that is at least partially manufactured from the incoming material with the
first and second markings” (Non-Final Act. 6).
Appellant argues that the Specification provides the requisite written
support in at least paragraphs 33–36, 38–40, and 45, specifically noting the
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disclosure in paragraph 45 that the product may include a plurality of
incoming materials from one or more suppliers (Appeal Br. 4). We are
persuaded by Appellant’s argument; therefore, we do not sustain the
Examiner’s rejection of claims 7–12 under 35 U.S.C. § 112(a) on this basis.
Patent-Ineligible Subject Matter
Appellant argues claims 1–18, 22, and 23 as a group (Appeal Br. 4–7).
We select independent claim 1 as representative. The remaining claims
stand or fall with claim 1. See 37 C.F.R. § 41.37(c)(1)(iv).
Under 35 U.S.C. § 101, “[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.” 35 U.S.C.
§ 101. The Supreme Court, however, has long interpreted § 101 to include
an implicit exception: “[l]aws of nature, natural phenomena, and abstract
ideas” are not patentable. Alice Corp. v. CLS Bank Int’l, 573 U.S. 208, 216
(2014).
The Supreme Court, in Alice, reiterated the two-step framework
previously set forth in Mayo Collaborative Services v. Prometheus
Laboratories, Inc., 566 U.S. 66 (2012), “for distinguishing patents that claim
laws of nature, natural phenomena, and abstract ideas from those that claim
patent-eligible applications of those concepts.” Alice Corp., 573 U.S. at 217.
The first step in that analysis is to “determine whether the claims at issue are
directed to one of those patent-ineligible concepts.” Id. If the claims are not
directed to a patent-ineligible concept, e.g., an abstract idea, the inquiry
ends. Otherwise, the inquiry proceeds to the second step where the elements
of the claims are considered “individually and ‘as an ordered combination’”
to determine whether there are additional elements that “‘transform the
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nature of the claim’ into a patent-eligible application.” Id. (quoting Mayo,
566 U.S. at 79, 78). This is “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.’” Id. at 217–18 (alteration in original).
The U.S. Patent and Trademark Office (the “USPTO”) published
revised guidance on January 7, 2019, for use by USPTO personnel in
evaluating subject matter eligibility under 35 U.S.C. § 101. 2019 REVISED
PATENT SUBJECT MATTER ELIGIBILITY GUIDANCE, 84 Fed. Reg. 50 (Jan. 7,
2019) (the “2019 Revised Guidance”).2 That guidance revised the USPTO’s
examination procedure with respect to the first step of the Mayo/Alice
framework by (1) “[p]roviding groupings of subject matter that [are]
considered an abstract idea”; and (2) clarifying that a claim is not “directed
to” a judicial exception if the judicial exception is integrated into a practical
application of that exception. Id. at 50.
The first step, as set forth in the 2019 Revised Guidance (i.e.,
Step 2A), is, thus, a two-prong test. In Step 2A, Prong One, we look to
whether the claim recites a judicial exception, e.g., one of the following
three groupings of abstract ideas: (1) mathematical concepts; (2) certain
methods of organizing human activity, e.g., fundamental economic
principles or practices, commercial or legal interactions; and (3) mental
processes. 2019 Revised Guidance, 84 Fed. Reg. at 54. If so, we next
determine, in Step 2A, Prong Two, whether the claim as a whole integrates

2 The MANUAL OF PATENT EXAMINING PROCEDURE (“MPEP”) incorporates
the revised guidance and subsequent updates at Section 2106 (9th ed.
Rev. 10.2019, rev. June 2020).
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the recited judicial exception into a practical application, i.e., whether the
additional elements recited in the claim beyond the judicial exception, apply,
rely on, or use the judicial exception in a manner that imposes a meaningful
limit on the judicial exception, such that the claim is more than a drafting
effort designed to monopolize the judicial exception. Id. at 54–55. Only if
the claim (1) recites a judicial exception and (2) does not integrate that
exception into a practical application do we conclude that the claim is
“directed to” the judicial exception, e.g., an abstract idea. Id.
If the claim is determined to be directed to a judicial exception under
revised Step 2A, we next evaluate the additional elements, individually and
in combination, in Step 2B, to determine whether they provide an inventive
concept, i.e., whether the additional elements or combination of elements
amounts to significantly more than the judicial exception itself; only then, is
the claim patent eligible. 2019 Revised Guidance, 84 Fed. Reg. at 56.
Here, in rejecting the pending claims under 35 U.S.C. § 101, the
Examiner determined that independent claims 1, 7, and 13 recite “managing
material across a supply chain,” including “establishing product relationship
and traceability,” i.e., a method of organizing human activity and, therefore,
an abstract idea (Non-Final Act. 7–8). The Examiner also determined that
the recited abstract idea is not integrated into a practical application (id.
at 8–9); that independent claims 1, 7, and 13 do not include additional
elements sufficient to amount to significantly more than the abstract idea
itself (id. at 9–11); and that the dependent claims are patent ineligible for
substantially the same reasons (id. at 11).
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Step One of the Mayo/Alice Framework (2019 Revised Guidance, Step 2A)
We are not persuaded by Appellant’s argument that the Examiner
erred in determining that claim 1 is directed to an abstract idea (Appeal
Br. 5). The Federal Circuit has explained that “the ‘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)). It asks whether the focus of the claims is on a
specific improvement in relevant technology or on a process that itself
qualifies as an “abstract idea” for which computers are invoked merely as a
tool. See id. at 1335–36. Here, it is clear from the Specification (including
the claim language) that claim 1 focuses on an abstract idea, and not on an
improvement to technology and/or a technical field.
The Specification is titled “End-to-End Commodity and Commodity
Marking Tracking,” and describes, in the Background section, that
“[p]roduct branding manufacturers assign . . . unique numeric identifiers to
commodities when they purchase parts from suppliers” and that these
“identifiers function as a tracking number for the respective commodity”
(Spec. ¶ 2). There is, however, no relationship between the identifiers that
the supplier may have applied to its parts and the manufacturer’s assigned
tracking numbers (id.). Also, after the manufacturer produces products
containing the supplied parts and delivers those products to a customer, the
customer may assign its own identifiers to the products; similar to the
identifiers provided by the supplier and the manufacturer, there also is no
relationship between the customer-assigned identifiers and the
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manufacturer’s assigned tracking numbers (id. ¶ 3). Therefore, in the event
of a product defect or recall at the supplier, manufacturer, or customer,
tracing the commodity purchase history through the product supply chain is
challenging inasmuch as the relationship between the supplier,
manufacturer, and customer is difficult to identify (id.).
The claimed invention is ostensibly intended to address this issue by
providing a system and method for tracking industry commodities across a
supply chain (Spec. ¶ 4). Claim 1, thus, recites a method comprising:
(1) receiving incoming material bearing a first marking and authenticating
the first marking, i.e.,
receiving incoming material with an applied first marking,
wherein the incoming material is to be converted to at least a
portion of a manufactured product, the first marking comprising
an identifier; [and]
authenticating the first marking, the authenticating
comprising:
scanning the first marking with a scanning device;
and
verifying validity of the scanned first marking
(steps (a) and (b)); (2) applying a second marking to the incoming material
and creating a first relationship between the first and second markings, i.e.,
“physically applying a second marking to the incoming material in response
to the authentication” and “creating a first relationship between the first
marking and the second marking, the first relationship linking the first
marking with the second marking” (steps (c) and (d)); (3) converting the
incoming material to a manufactured product and creating a second
relationship between the first relationship and the manufactured product, i.e.,
converting the received incoming material with the first
and second markings to the manufactured product, the
manufactured product comprising the incoming material such
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that the manufactured product has a different physical form than
the incoming material; [and]
creating a second relationship between the first
relationship and the manufactured product, the first and second
relationships providing traceability of the manufactured product
upstream and downstream of a product supply chain
(steps (e) and (f)); and (4) identifying the source of the incoming material
after the incoming material is converted into the manufactured product using
the second relationship, i.e., “identifying a source of the incoming material
that forms the manufactured product after the incoming material is converted
into the manufactured product using the second relationship in response to
input from a user accessing, from data storage, stored relationship data that
is linked to the manufactured product” (step (g)).
Appellant argues that the present rejection cannot be sustained
because claim 1 does not recite subject matter that falls within one of the
enumerated groupings of abstract ideas (Appeal Br. 5). Yet, claim 1, by
Appellant’s own admission, recites “tracking . . . commodities across a
supply chain using markings . . . placed on the components and products
made from the components at different stages in the supply chain . . . and . . .
accessing the markings using a distributed computing system between the
supplier, manufacturer, distributor, retailer, and consumer” (id.; see also
Reply Br. 5). Appellant summarily asserts, “[t]his is not an abstract idea
directed to certain methods of organizing human activity” (id.). But, we fail
to see why, and Appellant does not adequately explain why, the claim
limitations, as, thus characterized, when given their broadest reasonable
interpretation, fail to recite commercial interactions and/or managing
relationships or interactions between people, which are a method of
organizing human activity and, therefore, an abstract idea. Indeed, it could
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not be clearer from the Specification that the claimed invention is
specifically intended to establish an identifiable relationship between a
supplier of component parts, a product manufacturer, and a product
purchaser, i.e., a customer (see, e.g., Spec. ¶¶ 2, 3).
We also are not persuaded that claim 1 includes additional elements or
a combination of elements that integrates the recited abstract idea into a
practical application (Appeal Br. 6–7).
The 2019 Revised Guidance references MPEP, Ninth Edition
(rev. Jan 2018) (available at https://www.uspto.gov/web/offices/
pac/mpep/old/mpep_E9R08-2017.htm) § 2106.05(a)–(c) and (e) in
non-exhaustively listing considerations indicative that an additional element
or combination of elements may have integrated a recited judicial exception
into a practical application. 2019 Revised Guidance, 84 Fed. Reg. at 55.
In particular, the Guidance describes that an additional element may have
integrated the judicial exception into a practical application if, inter alia, the
additional element reflects an improvement in the functioning of a computer
or an improvement to other technology or technical field. Id. At the same
time, the Guidance makes clear that merely including instructions to
implement an abstract idea on a computer, or merely using a computer as a
tool to perform an abstract idea; adding insignificant extra-solution activity
to the judicial exception; or only generally linking the use of the judicial
exception to a particular technological environment or field are not sufficient
to integrate the judicial exception into a practical application. Id.
Appellant attempts to draw an analogy here between the present
claims and those the Court upheld as patent eligible in Diamond v. Diehr,
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450 U.S. 175 (1981) (Appeal Br. 6–7). But, Appellant’s reliance on Diehr is
misplaced.
The claims in Diehr were directed to a process for curing synthetic
rubber, and recited a series of steps (e.g., the loading of a mold with raw,
uncured rubber, closing the mold, constantly determining the mold
temperature, constantly recalculating the cure time, and automatically
opening the press at the proper time) that together applied the well-known
Arrhenius equation and transformed uncured synthetic rubber into a new
state or thing. See Diehr, 450 U.S. at 184–87. Although the claimed
process, thus, employed a well-known mathematical equation, the Court
held the claims patent eligible because they used the equation in a process
designed to solve a technological problem in “conventional industry
practice”; “[i]n other words, the claims in Diehr were patent eligible because
they improved an existing technological process.” Alice Corp., 573 U.S.
at 223.
Appellant argues here that, similar to the claims in Diehr, the claimed
method, as recited in claim 1, is patent eligible because it improves an
existing technological process, i.e., tracking products through the supply
chain (Appeal Br. 7; see also Reply Br. 7–8). But, we are not persuaded that
“[c]reating relationships between markings on products, which tie the
products to each step in the supply chain, and tracking the relationship data
using a distributed computing system that connects each party in the supply
chain . . . , including consumers” (Appeal Br. 7) is a technological
improvement, as opposed to an improvement in the abstract idea of
“managing material across a supply chain,” including “establishing product
relationship and traceability,” which is not enough for patent eligibility. See
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SAP Am., Inc. v. InvestPic, LLC, 898 F.3d 1161, 1170 (Fed. Cir. 2018)
(“[P]atent law does not protect such claims[, i.e., claims to an asserted
advance in the realm of abstract ideas], without more, no matter how
groundbreaking the advance.”). This is particularly so, where, as here, we
find no indication in the Specification that the operations recited in claim 1
require any specialized computer hardware or other inventive computer
components, invoke any allegedly inventive programming, or that the
claimed invention is implemented using other than generic computer
components as tools operating in their ordinary capacity.
We also note for the record that the relevant question under Step 2A,
Prong 2 is not whether the claimed invention itself, i.e., creating
relationships between markings on products, which tie the products to each
step in the supply chain, and tracking the relationship data, is a practical
application; instead, the question is whether the claim includes additional
elements beyond the judicial exception that integrate the judicial exception
into a practical application. The only additional elements in claim 1 beyond
the abstract idea are “a scanning device,” and, although not explicitly
recited, a processor, i.e., generic computer components (Non-Final Act. 8–9;
see also Spec. ¶¶ 24, 54, 55). “And after Alice, there can remain no doubt:
recitation of generic computer limitations does not make an otherwise
ineligible claim patent-eligible.” DDR Holdings, LLC v. Hotels.com, L.P.,
773 F.3d 1245, 1256 (Fed. Cir. 2014).
We conclude, for the reasons outlined above, that claim 1 recites a
method of organizing human activity, i.e., an abstract idea, and that the
additional elements recited in the claim beyond the abstract idea are no more
than generic computer components used as tools to perform the recited
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abstract idea. As such, they do not integrate the abstract idea into a practical
application. See Alice Corp., 573 U.S. at 223–24 (“[W]holly generic
computer implementation is not generally the sort of ‘additional featur[e]’
that provides any ‘practical assurance that the process is more than a drafting
effort designed to monopolize the [abstract idea] itself.’” (quoting Mayo,
566 U.S. at 77)). Accordingly, we agree with the Examiner that claim 1 is
directed to an abstract idea.
Step Two of the Mayo/Alice Framework (2019 Revised Guidance, Step 2B)
Having determined under step one of the Mayo/Alice framework that
claim 1 is directed to an abstract idea, we next consider under Step 2B of the
2019 Revised Guidance, the second step of the Mayo/Alice framework,
whether claim 1 includes additional elements or a combination of elements
that provides an “inventive concept,” i.e., whether an additional element or
combination of elements adds specific limitations beyond the judicial
exception that are not “well-understood, routine, conventional activity” in
the field (which is indicative that an inventive concept is present) or simply
appends well-understood, routine, conventional activities previously known
to the industry to the judicial exception. 2019 Revised Guidance,
84 Fed. Reg. at 56.
We agree with the Examiner that claim 1 does not include additional
elements or a combination of elements that provides an inventive concept
(Final Act. 20). And Appellant presents no arguments to the contrary.
We are not persuaded, for the reasons set forth above, that the
Examiner erred in rejecting independent claim 1 under 35 U.S.C. § 101.
Therefore, we sustain the Examiner’s rejection of claim 1, and claims 2–18,
22, and 23, which fall with claim 1.
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Obviousness
We are persuaded by Appellant’s argument that the Examiner erred in
rejecting independent claims 1, 7, and 13 under 35 U.S.C. § 103(a) at least
because Doljack, on which the Examiner relies, does not disclose or suggest
“creating a first relationship between the first marking and the second
marking, the first relationship linking the first marking with the second
marking,” as recited in claim 1, and similarly recited in claims 7 and 13
(Appeal Br. 7–8).
Doljack discloses a method of verifying the authenticity of goods, and
describes that the method includes generating and storing one or more
random codes in a database (Doljack 2:30–34). Each of the goods is marked
with one of the random codes such that each contains its own unique random
code; thus, upon field checking an inventory of marked goods and
comparing the codes on the marked goods to codes within the database, the
authenticity of the goods may be verified (id. at 2:34–38).
Doljack discloses that, in an alternative embodiment, a method and
system are provided for identifying an undesired diversion of goods from a
desired channel or channels of distribution (Doljack 10:22–25). Doljack,
thus, describes that a plurality of encryption key pairs (including a private
key that encrypts a code and a public key that decrypts the encrypted code)
is generated, one pair for each distribution channel through which a
manufacturer intends to ship its goods (id. at 10:25–34). Once generated,
the private key of an encryption key pair is provided to the manufacturer and
used by the manufacturer to generate encrypted combination codes for
application to its manufactured goods (id. at 10:34–42). The combination
code includes a random code and a non-random code; the random code is
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associated with a particular product and the non-random code is associated
with the manufacturer ((id. at 5:63–65, 8:22–28). Doljack, thus, discloses
that a determination is made whether or not a particular good has been
diverted into an undesired distribution channel by decrypting the encrypted
combination code with the public encryption (decryption) key; only if the
decrypted code matches the already known non-random portion of the
combination code, does Doljack determine that no diversion has occurred
(id. at 10: 53–11:1).
The Examiner ostensibly equates Doljack’s encryption key pair to the
claimed first and second markings (Ans. 12–14). Yet, as Appellant
observes, claim 1 recites that the first marking is affixed to an incoming
material and further recites “physically applying a second marking to the
incoming material” (Reply Br. 8–9).
“Doljack . . . does not teach marking the product with the encryption
key pair, which would ultimately frustrate the purpose of Doljack because
the private/public key pair would be in the open”; “[i]nstead, Doljack
teaches applying a particular combination code to a product where the
combination code is generated by the private key at the manufacturer and
then downstream using the public key to decrypt the combination code”
(Reply Br. 9). The encryption keys in Doljack are, moreover, associated
with a “particular channel of distribution through which goods are to be
tracked,” not a supply chain that is used to track materials used in the
manufacture of a product (id.).
Further, to the extent the Examiner equates the random code and non-
random code of Doljack’s combination code to the first and second
markings, we agree with Appellant that whereas Doljack teaches combining
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19
the random code and non-random code to create a single combination code
that is applied to a product, “[c]laim 1 recites that the incoming material
already has the first marking and that the second marking is applied at a later
time” (Reply Br. 9). As such, “Doljack does not teach ‘creating a first
relationship between the first marking and the second marking, the first
relationship linking the first marking with the second marking’” (id.).
We are persuaded, for the foregoing reasons, that the Examiner erred
in rejecting independent claims 1, 7, and 13 under 35 U.S.C. § 103(a).
Therefore, we do not sustain the Examiner’s rejection of claims 1, 7, and 13.
For the same reasons, we also do not sustain the Examiner’s rejection of
dependent claims 2–6, 8–12, 14–18, 22, and 23. 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”).
CONCLUSION
In summary:
Claim(s)
Rejected
35 U.S.C. § Reference(s)/Basis Affirmed Reversed
1–18, 22,
23
112(a) Written
Description
7–18 1–6, 22, 23
1–18, 22,
23
101 Eligibility 1–18, 22,
23

1–18, 22,
23
103 Doljack, Begelfer,
Pokorny
1–18, 22,
23
Overall
Outcome
1–18, 22,
23

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Application 14/501,192

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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). See 37 C.F.R.
§ 1.136(a)(1)(iv).
AFFIRMED