YPB LIMITEDDownload PDFPatent Trials and Appeals BoardJan 11, 20212020005942 (P.T.A.B. Jan. 11, 2021) Copy Citation 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. 14/441,470 05/07/2015 Anthony J. Dunlop 130069-00001 9714 27614 7590 01/11/2021 MCCARTER & ENGLISH, LLP NEWARK FOUR GATEWAY CENTER 100 MULBERRY STREET NEWARK, NJ 07102 EXAMINER AGWUMEZIE, CHINEDU CHARLES ART UNIT PAPER NUMBER 3685 MAIL DATE DELIVERY MODE 01/11/2021 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 ANTHONY J. DUNLOP, DAVID KINSMAN, and JOHN M. N. HOUSTON ____________ Appeal 2020-005942 Application 14/441,470 Technology Center 3600 ____________ Before HUBERT C. LORIN, ANTON W. FETTING, and KENNETH G. SCHOPFER, Administrative Patent Judges. FETTING, Administrative Patent Judge. DECISION ON APPEAL Appeal 2020-005942 Application 14/441,470 2 STATEMENT OF THE CASE1 Anthony J. Dunlop, David Kinsman, and John M. N. Houston (Appellant2) seek review under 35 U.S.C. § 134 of a final rejection of claims 38–57, the only claims pending in the application on appeal. We have jurisdiction over the appeal pursuant to 35 U.S.C. § 6(b). The Appellant invented an article identification system and method. Specification 1:6–7. An understanding of the invention can be derived from a reading of exemplary claim 38, which is reproduced below (bracketed matter and some paragraphing added). 38. A method for determining authenticity of an article of manufacture, comprising the steps of: [1] illuminating at least a portion of the article using a mobile device to activate a security tracer present on the portion of the article; [2] capturing at least one image formed by the security tracer using a camera of the mobile device; and 1 Our decision will make reference to Appellant’s Appeal Brief (“Appeal Br.,” filed April 13, 2020) and Reply Brief (“Reply Br.,” filed August 17, 2020), the Examiner’s Answer (“Ans.,” mailed June 17, 2020), and Final Action (“Final Act.,” mailed March 29, 2019). 2 We use the word “Appellant” to refer to “applicant” as defined in 37 C.F.R. § 1.42. Appellant identifies the real party in interest as YPB Limited. Appeal Br. 4. Appeal 2020-005942 Application 14/441,470 3 [3] comparing the at least one image or at least one characteristic extracted from the at least one image to reference data using a processor in communication with the camera to determine whether the article is authentic. The Examiner relies upon the following prior art: Name Reference Date Lapstun US 2007/0017987 A1 Jan. 25, 2007 Barashkov US 2014/0141085 A1 May 22, 2014 Claims 38–57 stand rejected under 35 U.S.C. § 103 as unpatentable over Barashkov and Lapstun. ISSUES The issues of obviousness turn primarily on whether the art describes the claim limitations within the scope recited. FACTS PERTINENT TO THE ISSUES The following enumerated Findings of Fact (FF) are believed to be supported by a preponderance of the evidence. Facts Related to the Prior Art Barashkov 01. Barashkov is directed to tracer particles, and methods for making the tracer particles. Barashkov para. 2. 02. Barashkov describes tracer particles that are magnetic, and are characterized by at least one distinguishing marking on the surface of the particle. The markings used on the tracer particles can be alphanumeric characters. The tracer particles can optionally Appeal 2020-005942 Application 14/441,470 4 contain additional features that facilitate detection and analysis, such as a fluorescent material. Barashkov para. 15. 03. Barashkov describes authenticating a product after the manufacture of a marked product using the tracer particles. A product can be tested for authenticity any point after production by detecting the tracer particle in the bulk material of the product, or in an article formed from the bulk material. If the tracer particle is detected in the tested product, authenticity of that product is confirmed. The detecting step will involve more than one step, where, generally, the first step is to isolate the tracer particles, and the second step is to visualize the distinguishing mark on the surface of the tracer particle, generally using magnification such as from a low power microscope, capable of observing surfaces of opaque objects using incident light. Visualizing the particles can be facilitated by using a secondary detection mechanism that has been installed in or on the particles, such as by the addition of any suitable chromogenic or fluorogenic materials, or suitable chromophores or fluorophores into or on the particles. Such materials can then be used to visualize the particles by colorimetric detection or fluorometric detection3, either visually or electronically detected. Barashkov para. 20. 3 Fluorometric detection occurs by detecting radiation from fluorogenic materials in response to exposure to and absorption of light, called excitation. See, e.g., Fluorescence Spectrophotometry: Principles and Applications, available at https://conductscience.com/fluorescence- Appeal 2020-005942 Application 14/441,470 5 04. Barashkov describes visualizing the tracer particles by means of visual magnification of the magnetically isolated particles with simple visible light microscopy, such as in stereoscopic microscopy (e.g., a dissecting style microscope) that uses incident (reflected) light illumination to view the surface of an object. Barashkov para. 104. 05. Barashkov describes field-of-view images from the light microscope being captured by any light-sensitive means to generate a micrograph. Purely digital microscopes and imaging equipment systems can use a CCD camera to visualize a sample, showing the resulting image directly on a computer screen without the need for eyepieces. Barashkov para. 105. 06. Barashkov describes incorporating a chromogenic material, a chromophore, a fluorogenic material, a fluorophore, or thermochromic material into the tracer particle, or as a coating on the tracer particle. This will facilitate the visualization of the particles, for example, by inducing color development (as from a water soluble dye) or fluorescence, e.g., when viewed under UV wavelength light. Barashkov para. 110. Lapstun 07. Lapstun is directed to the identification and protection of products and security documents using machine readable tags disposed on or in a surface of the product or security document. Lapstun para. 1. spectrophotometry-principles-and-applications/ (last viewed December 23, 2020). Appeal 2020-005942 Application 14/441,470 6 08. Lapstun describes a data reader which is selected from any one of the group comprising: a fixed scanner; a handheld scanner; a mobile phone; a pen; a stylus; and a personal digital assistant. Lapstun para. 48. ANALYSIS Claim 38 determines the authenticity of an article of manufacture. It does so by [1] illuminating at least a portion of the article using a mobile device to activate a security tracer present on the portion of the article; [2] capturing at least one image formed by the security tracer using a camera of the mobile device; and [3] comparing the at least one image or at least one characteristic extracted from the at least one image to reference data using a processor in communication with the camera to determine whether the article is authentic. The Examiner determines that Barashkov describes this, except for the use of a camera or mobile device. The Examiner applies Lapstun for using a camera or mobile device to identify and authenticate products, as in Barashkov. It is undisputed that Barashkov determines the authenticity of an article of manufacture by activating tracer elements present on the portion of the article, capturing data resulting from this, and comparing the data to reference data using a processor to determine whether the article is authentic. The issues are the scope of how such activation and capture might be performed to be within the claim scope. Barashkov describes a parallel process of doing so. Barashkov describes applying markings on magnetic particles. One authentication occurs by finding the magnetic particles. Activation as such is by a magnetic field. The parallel authentication process is by reading and Appeal 2020-005942 Application 14/441,470 7 comparing the markings on the particles to what is expected. Activation is by either visible light or by fluorescing radiation, if fluorometric detection is employed. In either case, some camera device would read the markings for comparison. We are not persuaded by Appellant’s argument that the Office Action has completely ignored the requirement that the illumination from the mobile device must “activate a security tracer present on the portion of the article.” This limitation is of particular importance, given that the present application utilizes the principles of luminescence and radiation decay curves in order to achieve the stated goal of determining authenticity of an article of manufacture. Appeal Br. 13. Claim 38 is silent as to principles of luminescence and radiation decay curves. The Specification does not lexicographically define or limit the scope of the limitation “activate.” Visible light activates the surface it hits to excite the surface atoms into emitting photons. Visible and ultraviolet lights used by fluorometric detectors even further excite fluorogenic materials in response to exposure to and absorption of light. Thus, Barashkov’s process for reading the markings is within the scope of the claim. As to independent claim 48, Appellant relies on the arguments in support of claim 38 (Appeal Br. 15), which are equally unpersuasive here. As to dependent claims 42 and 52, reciting “illuminating at least a portion of a label applied to the article to activate a security tracer present in at least a portion of the label,” Appellant again relies on the arguments in support of claim 38 (Appeal Br. 16–17), which are equally unpersuasive here. Appeal 2020-005942 Application 14/441,470 8 As to dependent claims 43 and 53, reciting “the label includes indicia,” Appellant argues “Barashkov fails to make any mention of the coating including any type of ‘label’ or ‘indicia.’” Appeal Br. 17–18. Neither claims nor Specification lexicographically defines “label” or “indicia.” Barashkov describes marking with alphanumeric characters. The string of such characters is within the scope of a label. Each character, and the fluorophores the markings comprise, are within the scope of indicia. As to dependent claims 45 and 55, reciting “the security tracer comprises a phosphor,” Appellant argues “Barashkov merely discloses that a pharmaceutical formulation can include dibasic calcium phosphate, and that phosphoric acid can be used as a wet chemical etching reagent. However, a pharmaceutical formulation and a wet chemical etching reagent in no way analogous to security tracers.” Appeal Br. 18–19. This is persuasive. The Examiner only determines that Barashkov uses phosphors in the etch that creates the markings, not in the markings themselves. The etch is removed after the markings are created. Barashkov also describes using phosphorus compounds as tracer particles, but only as particles whose presence alone indicates authenticity, not particles that are activated and imaged to show authenticity. CONCLUSIONS OF LAW The rejection of claims 38–44, 46–54, 56, and 57 under 35 U.S.C. § 103 as unpatentable over Barashkov and Lapstun is proper. The rejection of claims 45 and 55 under 35 U.S.C. § 103 as unpatentable over Barashkov and Lapstun is improper. Appeal 2020-005942 Application 14/441,470 9 CONCLUSION The rejection of claims 38–44, 46–54, 56, and 57 is affirmed. The rejection of claims 45 and 55 is reversed. In summary: Claims Rejected 35 U.S.C. § Basis Affirmed Reversed 38–57 103 Barashkov, Lapstun 38–44, 46–54, 56, 57 45, 55 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) (2011). AFFIRMED IN PART Copy with citationCopy as parenthetical citation