Ex Parte Appavu et al

Patent Trial and Appeal Board

Jun 12, 2017

13272636 (P.T.A.B. Jun. 12, 2017)

United States Patent and Trademark Office
UNITED STATES DEPARTMENT OF COMMERCE
United States Patent and Trademark Office
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Alexandria, Virginia 22313-1450
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APPLICATION NO. FILING DATE FIRST NAMED INVENTOR ATTORNEY DOCKET NO. CONFIRMATION NO.
13/272,636 10/13/2011 Rajendran APPAVU IN920110169US1/IBM041 1269
58923 7590
North Shore Patents, P.C.
P.O. Box 683
Marblehead, MA 01945
06/14/2017 EXAMINER
LEWIS, JUSTIN V
ART UNIT PAPER NUMBER
3725
NOTIFICATION DATE DELIVERY MODE
06/14/2017 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@nspatents.com
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PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte RAJENDRAN APPAVU and PRASHANT N. KULKARNI
Appeal 2015-006135
Application 13/272,6361
Technology Center 3700
Before STEFAN STAICOVICI, EDWARD A. BROWN, and
ANTHONY KNIGHT, Administrative Patent Judges.
STAICOVICI, Administrative Patent Judge.
DECISION ON APPEAL
STATEMENT OF THE CASE
Rajendran Appavu and Prashant N. Kulkami (Appellants) appeal
under 35 U.S.C. § 134(a) from the Examiner’s final decision rejecting under
35 U.S.C. § 103(a) claims 9, 11, 13, and 14 as being unpatentable over
Kargman (US 2002/0067827 Al, pub. June 6, 2002) and Gaffney et al. (US
2009/0121471 Al, pub. May 14, 2009, hereafter “Gaffney”).2 We have
jurisdiction over this appeal under 35 U.S.C. § 6(b).
1 According to Appellants, International Business Machines Corporation is
the real party in interest. Appeal Br. 3 (filed Oct. 14, 2014).
2 Claims 1—8, 10, 12, and 15—25 are cancelled. Appeal Br. 13—14 (Claims
App.).
Appeal 2015-006135
Application 13/272,636
SUMMARY OF DECISION
We REVERSE.
INVENTION
Appellants’ invention relates to a computer program product for
deterring information copying. Spec, paras. 4, 19.
Claim 9, the sole independent claim, is representative of the claimed
invention and reads as follows:
9. A computer program product for deterring information
copying, the computer program product comprising:
a computer readable storage medium having computer
readable program code embodied therewith, the
computer readable program code configured to:
mark onto each security instrument medium of a plurality
of security instrument media a unique matter serial number,
wherein each security instrument medium is associated with a
unique watermark serial number incorporated within the
security instrument medium as a watermark, wherein each
unique watermark serial number uniquely identifies the security
instrument medium within which the unique watermark serial
number is incorporated, wherein each unique matter serial
number uniquely identifies a security instrument created from
the security instrument medium onto which the unique
matter serial number is marked;
for a given security instrument, combine the unique
watermark serial number incorporated within the security
instrument medium of the given security instrument and the
unique matter serial number marked onto the security
instrument medium of the given security instrument to create a
unique combined serial number;
create a digital signature by encoding the unique
combined serial number using a private key of a public/private
key pair; and
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Appeal 2015-006135
Application 13/272,636
imprint the digital signature on the security instrument
medium of the given security instrument.
ANALYSIS
Independent claim 9 requires, inter alia, that “each security
instrument medium is associated with a unique watermark serial number
incorporated within the security instrument medium as a watermark.”
Appeal Br. 13 (Claims App.). The Examiner finds that although Kargman
fails to disclose this limitation, nonetheless, Gaffney discloses “the concept
of providing an article with an identification number in the form of a
watermark serial number.” Final Act. 4 (citing Gaffney, para. 25).
Appellants argue that because Gaffney’s bank and check identification
information is printed on the face of check 10, Gaffney fails to disclose a
watermark that is incorporated “within” the check, as called for by claim 9.
Appeal Br. 10-11. According to Appellants, “[t]he watermark referenced
by the Examiner is thus printed onto the paper after the paper is
manufactured and cannot be interpreted as being incorporated within the
paper.” Id. at 11.
In response, the Examiner takes the position that paragraph 25 of
Gaffney explicitly discloses providing composite images of information,
such as, serial numbers and passwords, that are “incorporated into the
documents as a watermark.” Ans. 9.3
3 Paragraph 25 of Gaffney states that “[t]he composite images are . . .
incorporated into the document as a watermark, background or an imbedded
image as described below.”
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Appeal 2015-006135
Application 13/272,636
Gaffney discloses a process for generating secure documents by
incorporating security images into the document. Gaffney, Abstract.
Gaffney’s process includes generating a document 300 having fixed text
fields TF1—TF4, a title area TA, graphic fields GF1, GF2, a security code
field SCF, data fields DF1—DF3 that include data entered by an operator, and
data fields B1—B3 reserved for security images that correspond to the data
fields DF1—DF3. Gaffney, para. 27, Fig. 3 A. Gaffney then sends document
300 to server 14 where data fields DF1—DF3 are identified and translated
into corresponding security images SI1— SI3 that replace and overwrite data
fields Bl—B3. Id., paras. 29, 30, Fig. 3B. Finally, document 300 is printed,
as shown in Figure 3B, using any standard printer 54. Id., para. 33.
Gaffney’s document 300 may include other security images such as security
image SI4 behind the title field, security image SI5 located at any other
location on the document, and security image SI6 that forms a background
or a watermark for the entire document. Id., para. 34, Figs. 3B, 3C.
As such, although we appreciate that Gaffney discloses incorporating
a watermark into document 300, nonetheless Gaffney’s watermark is printed
on the document rather than being incorporated “within” the document, as
called for by independent claim 9.4 We agree with Appellants that the use of
the term “within” requires that the Gaffney’s watermark be inside or in the
interior of document 300. Appeal Br. 10. During examination of a patent
application, pending claims are given their broadest reasonable construction
4 Like Appellants, we find that an ordinary and customary meaning of the
term “within” is “in or into the interior: INSIDE.” Merriam Webster’s
Collegiate Dictionary (10th ed. 2005); see also Appeal Br. 10.
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Appeal 2015-006135
Application 13/272,636
consistent with the Specification. In re Am. Acad, of Sci. Tech Ctr., 367
F.3d 1359, 1364 (Fed. Cir. 2004). Such an interpretation is consistent with
Appellants’ Specification, which states that “[e]ach financial instrument
paper is manufactured to comprise a unique serial number incorporated
within the paper as a watermark.” Spec., para 30. Hence, because
Gaffney’s security images, i.e., watermark, are printed on document 300,
rather than being incorporated within document 300, in contrast to the
Examiner’s position, Gaffney fails to disclose a “watermark . . .
incorporated within the security instrument medium,” as called for by
independent claim 9. Therefore, we do not sustain the rejection under 35
U.S.C. § 103(a) of independent claim 9 as unpatentable over Kargman and
Gaffney.
With respect to the rejection of dependent claims 11, 13, and 14,
Appellants rely on the same argument as discussed supra. Appeal Br. 12.
Accordingly, for the same reasons as discussed above, we also do not sustain
the rejection of claims 11, 13, and 14 over the combined teachings of
Kargman and Gaffney.
SUMMARY
The Examiner’s decision to reject claims 9, 11, 13, and 14 is reversed.
REVERSED
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