Ex Parte Kitada

Board of Patent Appeals and Interferences

Feb 16, 2007

09665667 (B.P.A.I. Feb. 16, 2007)

The opinion in support of the decision being entered today was not written for
publication and is not binding precedent of the Board.

UNITED STATES PATENT AND TRADEMARK OFFICE
____________

BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
____________

Ex parte TAKAHARU KITADA
____________

Appeal No. 2006-3239
Application No. 09/665,667
____________

ON BRIEF
____________

Before BARRY, BLANKENSHIP, and SAADAT, Administrative Patent Judges.
BLANKENSHIP, Administrative Patent Judge.

DECISION ON APPEAL
This is a decision on appeal under 35 U.S.C. ' 134 from the examiner=s final
rejection of claims 1-20, which are all the claims in the application.
We affirm.
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Application No. 09/665,667

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BACKGROUND
The invention relates to an information processing system and method whereby
an information providing medium is inconspicuously attached to the entity.
Representative claim 1 is reproduced below.
1. An information processing system comprising:

an information providing medium that stores information in an
electromagnetic or optical manner, the information providing medium being
attached to an entity in order to provide information associated with the entity;

a hand held terminal device having an information read function for
reading said information from said information providing medium in an
electromagnetic or optical manner and recording the information therein; and

an information processing unit for retrieving said information recorded in
said hand held terminal device and processing the information therein;

wherein said information providing medium is inconspicuously attached to
the entity.

The examiner relies on the following references:
Gallagher, III et al. (Gallagher) US 5,959,531 Sep. 28, 1999

Storch et al. (Storch) US 5,367,148 Nov. 22, 1994

Reymond US 5,898,370 Apr. 27, 1999

Watada US 6,012,641 Jan. 11, 2000

Walsh et al. (Walsh) US 6,089,456 Jul. 18, 2000

Zembitski US 6,193,160 B1 Feb. 27, 2001

Claims 1, 2, 6, 10, 15, 16, 18, and 19 stand rejected under 35 U.S.C. ' 103 as
being unpatentable over Zembitski and Reymond.
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Claims 3 and 17 stand rejected under 35 U.S.C. ' 103 as being unpatentable
over Zembitski, Reymond, and Storch.
Claim 4 stands rejected under 35 U.S.C. ' 103 as being unpatentable over
Zembitski, Reymond, Gallagher, and Watada.
Claims 5, 7, and 11-14 stand rejected under 35 U.S.C. ' 103 as being
unpatentable over Zembitski, Reymond, and Walsh.
Claims 8 and 9 stand rejected under 35 U.S.C. ' 103 as being unpatentable over
Walsh and Reymond.
Claim 20 stands rejected under 35 U.S.C. ' 103 as being unpatentable over
Zembitski, Reymond, and Storch.
We refer to the Final Rejection (mailed Dec. 12, 2002) and the Examiner=s
Answer (mailed Nov. 2, 2004) for a statement of the examiner=s position and to the
Brief (filed Sep. 22, 2003) and the Reply Brief (filed Dec. 17, 2004) for appellant=s
position with respect to the claims which stand rejected.

OPINION
In response to the rejection of claim 1 over Zembitski and Reymond, appellant
submits that a Afundamental difference@ between the claimed invention and Zembitski
is that Zembitski merely reads the bar code, and associates the scanned data with
information in a database. (Brief at 8.) Appellant does not, however, point to any
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Application No. 09/665,667

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language in the claim that might distinguish over reading a bar code and associating the
scanned data with information in a database. Nor do we find any such language.
Appellant next argues that Zimbitski teaches using a scanner that needs to have
the label knowingly in its line of sight. To Ahide@ the label in Zimbitski, according to
appellant, would make Zimbitski inoperative. (Id.) Appellant, again, neglects to point
out any claimed limitations that might correspond to the argument. Claim 1, however,
ends with the recitation Awherein said information providing medium is inconspicuously
attached to the entity.@
According to appellant=s Brief (at 3-4), the recitation is supported by the
specification at page 3, line 22 to page 4, line 9 and page 12, line 19 to page 13, line 15.
The only description of what might be considered Ainconspicuously attached@ in the
identified sections appears at the final paragraph of page 12. The specification
describes therein that in the case that the system is used to discriminate whether the
entity 2 (Fig. 1) is genuine or counterfeit, Athe form in which the information providing
medium 1 is embedded in the object.@ Accordingly, only Aan authorized checker or a
specific information user can grasp its mount location.@ We note, further, that a more
detailed description of the embodiment appears at pages 74 and 75 of the specification.
Figure 19 depicts Ainformation providing electronic part@ 11, whereby item information
is read in an electromagnetic manner, using information reading display 12.
Clearly, an information providing medium that stores information to be read in an
electromagnetic manner can be embedded in an object, as depicted in instant Figure
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19. Such an embedded medium may be considered, fairly, as Ainconspicuously
attached.@ Appellant does not, however, point to any express description in the
disclosure whereby an information providing medium capable of being read in an optical
manner might be considered Ainconspicuously attached.@ We conclude that the claim 1
recitation of wherein the medium is inconspicuously attached, at least as it applies to
the alternative that the medium stores information that may be read in an optical
manner, does not require having the medium always aligned with an optical reader, as
appellant seems to argue. We hold, in fact, that the claim 1 recitation cannot distinguish
over a bar code that is attached to an article, as described by Zembitski. A bar code
that covers only a small portion of a package, consistent with Figures 6(a) through 6(c)
of Zembitski, may fairly be considered Ainconspicuously attached,@ for all that the
Awherein@ clause of claim 1 requires.
Independent claim 10, which recites Ainconspicuously attaching@ an information
providing medium that stores information in an electromagnetic Aor optical@ manner to
an article or material, likewise cannot distinguish over the bar code system described by
Zembitski. Appellant does not argue any of the dependent claims separately. Not
being persuaded of error in the rejection of any of the claims, we sustain the rejection of
claims 1, 2, 6, 10, 15, 16, 18, and 19 under 35 U.S.C. ' 103 as being unpatentable over
Zembitski and Reymond.
Representative claim 3 recites that the information processing unit of claim 1 is
adapted to discriminate whether the information read from the hand held terminal is
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Agenuiness [sic] or counterfeit.@ Appellant submits that because Storch requires two
separate tags, one on the outside and one on the inside of a product, at least one tag
must be in plain view and thus cannot be Ainconspicuously attached@ as recited in
independent claim 1.
As we have indicated in association with instant claim 1, we do not consider the
recitation Ainconspicuously attached@ to require that an (optical) information providing
medium never be in plain view. Moreover, Storch does not require that one tag be on
the inside of a product; nor does Storch require that an information providing medium be
in plain view. Storch describes embodiments suitable for product authentication in
which a bar code may be readable by an optical scanner, yet invisible to the human
eye, or hidden by virtue of the code being invisible or transparent to humans and placed
over another, visible, bar code. See Storch col. 22, l. 55 - col. 24, l. 4. It would seem
that such embodiments would have to meet even appellant=s unarticulated definition of
Ainconspicuously attached.@
We thus sustain the rejection of claims 3 and 17 under 35 U.S.C. ' 103 as being
unpatentable over Zembitski, Reymond, and Storch. We also sustain the rejection of
claim 4 under 35 U.S.C. ' 103 as being unpatentable over Zembitski, Reymond,
Gallagher, and Watada and the rejection of claims 5, 7, and 11-14 under 35 U.S.C.
' 103 as being unpatentable over Zembitski, Reymond, and Walsh, as the claims are
not separately argued. Appellant has thus not shown error in the rejection of
representative claims 4 and 7. See 37 CFR ' 1.192(c)(7) (2003); see also In re
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McDaniel, 293 F.3d 1379, 1383, 63 USPQ2d 1462, 1465 (Fed. Cir. 2002) (AIf the brief
fails to meet either requirement [of 37 CFR ' 1.192(c)(7)], the Board is free to select a
single claim from each group of claims subject to a common ground of rejection as
representative of all claims in that group and to decide the appeal of that rejection
based solely on the selected representative claim.@).
Appellant=s argument in support of representative claim 8 is based on the
supposition, that we have previously considered, that bar code media cannot be
Ainconspicuously attached@ to an entity. We again find the position to be untenable.
Moreover, the artisan knew, as evidenced by Storch, there was no requirement that bar
code information be visible to human observers. Appellant=s position in support of
claim 20 rests on the notion that bar code media cannot be Ainconspicuously attached,@
and fails to address the embodiments of Storch that we have noted in relation to instant
claim 3. We therefore sustain the rejection of claims 8 and 9 under 35 U.S.C. ' 103 as
being unpatentable over Walsh and Reymond, and the rejection of claim 20 under 35
U.S.C. ' 103 as being unpatentable over Zembitski, Reymond, and Storch.

CONCLUSION
The rejection of claims 1-20 under 35 U.S.C. ' 103 is affirmed.
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No time period for taking any subsequent action in connection with this appeal
may be extended under 37 CFR ' 1.136(a). See 37 CFR ' 1.136(a)(1)(iv).

AFFIRMED

LANCE LEONARD BARRY )
Administrative Patent Judge )
)
)
)
) BOARD OF PATENT
HOWARD B. BLANKENSHIP ) APPEALS
Administrative Patent Judge ) AND
) INTERFERENCES
)
)
)
MAHSHID D. SAADAT )
Administrative Patent Judge )
Appeal No. 2006-3239
Application No. 09/665,667

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