YPB LIMITED

Patent Trials and Appeals Board

Jan 11, 2021

2020005942 (P.T.A.B. Jan. 11, 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.
14/441,470 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

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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.

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[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
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Application 14/441,470

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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-
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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).
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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
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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.
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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.
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Application 14/441,470

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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