Ex Parte Kruse

Board of Patent Appeals and Interferences

Jan 19, 2012

10571955 (B.P.A.I. Jan. 19, 2012)

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.
10/571,955 09/18/2006 Albrecht Kruse 7400-X06-137 1437
27317 7590 01/20/2012
Fleit Gibbons Gutman Bongini & Bianco PL
21355 EAST DIXIE HIGHWAY
SUITE 115
MIAMI, FL 33180
EXAMINER
ABRISHAMKAR, KAVEH
ART UNIT PAPER NUMBER
2494
MAIL DATE DELIVERY MODE
01/20/2012 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 BOARD OF PATENT APPEALS
AND INTERFERENCES
____________________

Ex parte ALBRECHT KRUSE
____________________

Appeal 2010-006538
Application 10/571,955
Technology Center 2400
____________________

Before DEBRA K. STEPHENS, DENISE M. POTHEIR, and BRUCE, R.
WINSOR, Administrative Patent Judges.

STEPHENS, Administrative Patent Judge.

DECISION ON APPEAL

Appellant appeals under 35 U.S.C. § 134(a) from a final rejection of
claims 7-13. We have jurisdiction under 35 U.S.C. § 6(b). An Oral Hearing
was held on January 10, 2012.
We REVERSE and ENTER A NEW GROUND OF REJECTION
PURSUANT TO OUR AUTHORITY UNDER 37 C.F.R. § 41.50(b).

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Introduction
According to Appellant, the invention is related to a method for
authenticating a manufacturer‟s individual product (Abstract).
STATEMENT OF THE CASE

Exemplary Claim
Claim 7 is an exemplary claim and is reproduced below:
7 A method for authenticating an individual product of a
manufacturer to a distribution level and to a third party, which
comprises:

generating a first code, said first code being specific to the
individual product and serving to authenticate the individual
product to the distribution level;

generating a second code, said second code being specific to the
individual product and serving to authenticate the individual
product to the third party;

applying said first code to the individual product or packaging
of the individual product;

applying said second code to the individual product or
packaging of the individual product;

storing said first code in a publicly accessible database to create
a stored first code;

storing said second code in said publicly accessible database to
create a stored second code;

concealing said first code;

concealing said second code;
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revealing said first code by the distribution level;

reading said first code by the distribution level;

submitting said first code to said database by the distribution
level;

determining if said first code is in said database;

determining if said first code was previously submitted;

revealing said second code by the third party;

reading said second code by the third party;

submitting said second code into the database by the third
party;

determining if said second code is in said database; and

determining if said second code entered by the third party was
previously submitted.

Prior Art
Royer US 6,308,991 B1 Oct. 30, 2001
Doljack US 6,442,276 B1 Aug. 27, 2002

Rejections
Claims 7-13 stand rejected under 35 U.S.C. § 101 as being directed to
non-statutory matter.
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Claims 7, 8, and 10-13 stand rejected under 35 U.S.C. § 102(b) as
being anticipated by Doljack.
1

Claims 9 stand rejected under 35 U.S.C. § 103(a) for obviousness over
Doljack and Royer.

GROUPING OF CLAIMS

(1) With regard to the rejection under 35 U.S.C. § 101, Appellant
argues claims 7 and 13 collectively (App. Br. 13). We select claim 7 as the
representative claim and will, therefore, treat claims 8-13 as standing or
falling with representative claim 7.
(2) With regard to the rejection under 35 U.S.C. § 102(b), Appellant
argues claims 7, 8, 10, and 11 as a group on the basis of claim 7 (Appeal Br.
14-15). Appellant presents similar arguments for commensurately recited
claim 13 (App. Br. 15-16). We select claim 7 as the representative claim
and therefore, treat claims 8, 10-13 as standing or falling with representative
claim 7.
(3) With regard to the rejection under 35 U.S.C. § 103(a), Appellant
argues claim 9 independently (App. Br. 17-18). We will, therefore, address
claim 9 separately.

1
The Examiner rejects claim 9 under 35 U.S.C. § 102(b) and then separately
rejects claim 9 under 35 U.S.C. § 103(a) (Final Rej. 4 and 9; Ans. 3 and 8).
Based on the Examiner‟s statements, however, claim 9 appears to be
incorrectly included in the rejection under 35 U.S.C. § 102(b). We therefore
presume, like Appellant (App. Br. 14), that claim 9 is rejected over under 35
U.S.C. § 103(a) for obviousness over Doljack and Royer and the anticipation
rejection is of claims 7, 8, and 10-13.
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We accept Appellant‟s grouping of the claims. See 37 C.F.R.
§ 41.37(c)(1)(vii).

ISSUE 1
35 U.S.C. § 101: claims 7-13
Appellant argues their invention is directed toward statutory subject
matter (App. Br. 13; Reply Br. 4). Specifically, Appellant asserts the
independent claims both recite transforming a particular article into a
different state or thing - e.g., applying the first code to an individual
product (id.). Additionally, Appellant argues the steps are more than mental
steps (id.).
In response, the Examiner maintains that the product is not
transformed just because a code has been applied to it (Ans. 9-10). Thus,
according to the Examiner, the invention as recited in independent claims 7
and 13 do not “transform” the article sufficiently to meet the
machine-or-transformation test (id.).

Issue 1: Has the Examiner erred in concluding the invention as
recited in claims 7-13 is directed toward statutory subject matter?

ANALYSIS
We agree with Appellant. “[The Supreme] Court‟s precedents
establish that the machine-or-transformation test is a useful and important
clue, an investigative tool, for determining whether some claimed inventions
are processes under §101. The machine-or-transformation test is not the sole
test for deciding whether an invention is a patent-eligible „process.‟” See
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Bilski v. Kappos, 130 S.Ct. 3218, 3227 (2010). Those tools involve an
inquiry into whether a process is merely an abstract idea. “In searching for a
limiting principle, this Court‟s precedents on the unpatentability of abstract
ideas provide useful tools.” (Id. at 229).
Appellant‟s invention as recited in independent claims 7 and 13 do not
recite an abstract idea. The steps are not mere mental processes but instead
require applying and concealing codes on products –altering a tangible item.
Accordingly, we conclude the invention as recited in independent claims 7
and 13 and the dependent claims 8-12 are directed toward statutory subject
matter.

ISSUE 2
35 U.S.C. § 102(b): claims 7, 8, and 10-13
Appellant argues their invention is not anticipated by Doljack (App.
Br. 14-16; Reply Br. 5-9). Specifically, Appellant argues Doljack teaches
that the code, although including two parts, is always read as a single
combination code (App. Br. 14). Additionally, Appellant asserts Doljack
does not teach verifying the first and second code at a first and second level,
respectively (App. Br. 15).
In response, the Examiner maintains that Doljack discloses that there
can be more than one code attached, or that a code can be attached more
than once in different formats to the same product and be checked at any
point during the distribution process (App. Br. 10-11). The Examiner notes
the claims do not require the first and second code be different codes, only
that they are unique to the individual product (id.).
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Issue 2: Has the Examiner erred in finding Doljack discloses the
invention as recited in claim 7 and commensurately recited in claim 13?

ANALYSIS
We agree with and adopt the Examiner‟s findings that Doljack
describes that more than one code, for example, a bar code and an
alphanumeric code, can be attached to the same product (Ans. 10; see also
Fig. 1; col. 8, ll. 58 -61). The Examiner is correct that the claims do not
require the codes represent different information. Nor do the claims require
that reading the first code by the first level precludes reading the second
code at the same time. As a cumulative reference in Doljack, we also find
Doljack specifically recites marking the goods with one or more codes (col.
12, ll. 44-47).
However, we agree with Appellant that Doljack does not disclose two
parties that read and submit the respective code to a database to determine if
the code is in the database. Doljack states the codes are read and compared
“[a]t a retail distribution outlet such as a retail store or alternatively, at any
point earlier in the distribution chain” (col. 4, ll. 15-20)(emphasis added).
Therefore, we find the prior art does not disclose two parties that read and
submit the respective code to a database.
Therefore, the Examiner erred in finding Doljack describes the
invention as recited in independent claim 7 and commensurately recited in
independent claim 13. Dependent claims 8 and 10-12 stand with claim 7.
Accordingly, we find claims 7, 8, and 10-13 are not anticipated by Doljack.

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ISSUE 3
35 U.S.C. § 103(a): claim 9
As set forth in Issue 2, Doljack does not anticipate the invention
recited in claim 7 from which claim 9 depends. The Examiner has not
shown Royer cures the deficiencies of Doljack, as applied by the Examiner.
Therefore, we find claim 9 is not obvious over Doljack and Royer.

NEW GROUND OF REJECTION UNDER
37 C.F.R. § 41.50(b)
Although we found in Issue 2 that Doljack does not anticipate the
invention as recited in independent claims 7 and 13, we conclude that having
two parties read and submit the respective code to a database to determine if
the code is in the database would have been obvious to one of ordinary skill
in the art. Indeed, we conclude that checking, submitting, and determining
the code by a second party are the same steps performed by the first party.
Thus, having two parties perform the same steps would have been within the
skills of an ordinary artisan, is no more than the predictable use of prior art
elements according to their established function, and would have yielded
predictable results (See KSR Int’l Co. v. Teleflex Inc., 550 U.S. 398, 406
(2007)). Moreover, Doljack‟s teaching suggests to an ordinary skilled
artisan scanning products at various stages during the distribution and
purchase so that the seller can obtained desired product information during
different phases of selling a product. (See col. 4, ll. 15-20.). Accordingly,
we reject the present invention as recited in independent claims 7 and 13
under 35 U.S.C. § 103(a) for obviousness over Doljack.
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Although we have rejected claims 7 and 13 under 37 C.F.R.
§ 41.50(b), we have not reviewed the remaining claims to the extent
necessary to determine whether these claims are unpatentable under 35
U.S.C. § 103. We leave it to the Examiner to determine the appropriateness
of any further rejections based thereon.

DECISION
The Examiner‟s rejection of claims 7-13 under 35 U.S.C. § 101 as
being directed to non-statutory matter is reversed.
The Examiner‟s rejection of claims 7, 8, and 10-13 under 35 U.S.C.
§ 102(b) as being anticipated by Doljack is reversed.
The Examiner‟s rejection of claim 9 under 35 U.S.C. § 103(a) as
being obvious over Doljack and Royer is reversed.
A new ground of rejection is entered under 37 C.F.R. § 41.50(b) in
which claims 7 and 13 are rejected under 35 U.S.C. § 103 as being obvious
over Doljack.
37 C.F.R. § 41.50(b)
37 C.F.R. § 41.50(b) provides that, "[a] new ground of rejection pursuant to
this paragraph shall not be considered final for judicial review."
37 C.F.R. § 41.50(b) also provides that the Appellants, WITHIN TWO
MONTHS FROM THE DATE OF THE DECISION, must exercise one of
the following two options with respect to the new grounds of rejection to
avoid termination of proceedings (37 C.F.R. § 1.197 (b) as to the rejected
claims:
(1) Reopen prosecution. Submit an appropriate amendment of the
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claims so rejected or new evidence relating to the claims so rejected,
or both, and have the matter reconsidered by the examiner, in which
event the proceeding will be remanded to the examiner ...
(2) Request rehearing. Request that the proceeding be reheard under
37 C.F.R. § 41.52 by the Board upon the same record ...

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) (2007).

REVERSED; 37 C.F.R. § 41.50(b)

ELD