Ex Parte Reffe

Patent Trial and Appeal Board

Sep 26, 2017

12990189 (P.T.A.B. Sep. 26, 2017)

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.
12/990,189 10/28/2010 Nicolas Reffe 20802/98233-US 6463
42798 7590 09/27/2017
FITCH, EVEN, TAB IN & FLANNERY, LLP
120 South LaSalle Street, Suite 1600
Chicago, IL 60603-3406
EXAMINER
YANG, JAMES J
ART UNIT PAPER NUMBER
2683
MAIL DATE DELIVERY MODE
09/27/2017 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 NICOLAS REFFE
Appeal 2016-003559
Application 12/990,189
Technology Center 2600
Before ROBERT E. NAPPI, JUSTIN BUSCH, and
JASON M. REPKO, Administrative Patent Judges.
BUSCH, Administrative Patent Judge.
DECISION ON APPEAL
This is a decision on appeal under 35 U.S.C. § 134(a) of the rejection
of claims 1, 3, 4, 6, 9-14, 16, and 17. We have jurisdiction under 35 U.S.C.
§ 6(b).
We affirm-in-part.
Appeal 2016-003559
Application 12/990,189
CLAIMED SUBJECT MATTER
The claims relate generally to tracking and process verification and,
more specifically, to a device carrying an RFID chip that calculates a mark
indicating a series of events the device has experienced or undergone, and
comparing the calculated mark to a theoretical mark calculated by a
checking system using a similar process in order to validate the events
experienced. Spec. 1:5—12. Claim 1 is reproduced below:
1. A method of validating a succession of events in the life
of a device carrying an RFID electronic label including a RFID
chip relative to a predefined succession of events, said method
comprising:
for each event of said succession of events
experienced by the device:
a step of said RFID chip calculating a current
value of a traceability mark by applying to an
identifier of the event received from a scanner
external to the device and associated with the event
after completion of said event, a cryptographic
hashing function with parameters set by a value of
the traceability mark calculated for a preceding event
of the succession of events;
a step of said RFID chip storing the current
value of the traceability mark on the device;
after the succession of events, a step of a
checking system distinct from the device obtaining a
latest value of the traceability mark stored on the
device;
a step of the checking system generating the
value of a theoretical mark by applying the
cryptographic hashing function successively to
identifiers taken in the order of the events of the
predefined succession of events; and
if the latest value of the traceability mark is
equal to the value of the theoretical mark, a step of
the checking system validating that the predefined
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Application 12/990,189
succession of events has been experienced by the
device.
REJECTIONS
Claims 1,3,4, 6, 9-14, and 16 stand rejected under 35 U.S.C.
§ 103(a) as unpatentable in view of Teglia (FR 2 841 015 Al; Dec. 19,
2003) and Mabry (US 6,330,971 Bl; Dec. 18, 2001). Final Act. 2-16.1
Claim 17 stands rejected under 35 U.S.C. § 103(a) as unpatentable in
view of Teglia, Mabry, and Chan (US 7,142,121 B2; Nov. 28, 2006). Final
Act. 17-18.
ANALYSIS
Claims 1.3.4. 5.9.14.16. and 17
The Examiner rejects independent claim 1 as obvious in view of the
combined teachings of Teglia and Mabry. Specifically, the Examiner finds
Teglia teaches every limitation of claim 1, except “a device carrying an
RFID electronic label including a RFID chip,” and “an identifier of the event
received from a scanner external to the device.” Final Act. 3^4. The
Examiner finds Mabry teaches an RFID tag carried by a device for storing
process and identification information and a host computer that commands
the reader to program a tag. Final Act. 4 (citing Mabry 2:57—62, 5:5—10).
The Examiner explains that the proposed combination “incorporate[s] the
calculating, and all the corresponding hardware and software required [to]
perform the calculating, with the RFID chip of Mabry, thus forming an
RFID chip with digital signature capabilities.” Ans. 3 (citation omitted)
1 Although the statement of rejection in the Final Action includes claim 5
and omits claims 4, 10—14, and 16, the explanation of the rejection includes
the omitted claims. Thus, the inclusion of claim 5 and the omission of
claims 4, 10—14, and 16 from the statement of the rejection is harmless error.
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Appeal 2016-003559
Application 12/990,189
(citing Mabry 5:5—10). The Examiner further finds it would have been
obvious to implement Teglia’s program on Mabry’s RFID tag “to use a
system protocol that is well-suited for communicating pages of identifying
information for a process.” Final Act. 5 (citing Mabry 2:52—56).
Appellant argues the Examiner’s proposed combination of Teglia and
Mabry does not teach or suggest a traceability mark calculated by the RFID
chip or that the mark is “calculated by applying a cryptographic hashing
function to an identifier of the event, where the hashing function has
parameters set by a value of the traceability mark calculated for a preceding
event.” App. Br. 13. In particular, Appellant argues Teglia does not
disclose a hashing function with parameters set by a value of Teglia’s digital
signature, which the Examiner finds teaches the recited traceability mark.
App. Br. 13.
We disagree with Appellant that the Examiner’s proposed
combination does not teach the RFID chip using a cryptographic hashing
function to calculate a traceability mark. As discussed above, Teglia teaches
calculating a digital signature, and Appellant has not persuasively argued
that Teglia’s digital signature fails to teach the recited traceability mark.
The Examiner’s proposed combination includes incorporating Teglia’s
software and hardware necessary for calculating a digital signature onto the
RFID chip. See Ans. 3. Thus, Appellant’s argument that the RFID chip in
the Examiner’s proposed combination does not calculate a digital signature
is not persuasive.
We agree, however, with Appellant that the Examiner’s findings
regarding Teglia’s hash function are insufficient to demonstrate that Teglia
teaches the calculating step as recited in claim 1. In particular, Appellant
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Appeal 2016-003559
Application 12/990,189
argues Teglia does not disclose a hashing function with parameters set by a
previous value of Teglia’s digital signature, which the Examiner finds
teaches the recited traceability mark. App. Br. 13. The Examiner’s only
response in the Answer is that Appellant “has not provided reasoning against
the examiner's interpretation of Teglia’s hash function.” Ans. 3.
Teglia is directed to a particular method for verifying instructions by
determining a digital signature for an operator of an instruction, and
comparing the determined digital signature to an expected value of a digital
signature stored in memory. Teglia, Abstract. Teglia discloses determining
a digital signature for each operator in an instruction by using a code
associated with the operator and a code identifying the position of the
instruction in the program. Id. Teglia explicitly states that it does not use
the values of the operands. Id.
The Examiner points to pages 3 and 5 of the machine translation of
Teglia as teaching the calculating step. Final Act. 3; Ans. 3. The Examiner
finds Teglia’s digital signatures teach or suggest the recited traceability mark
and Teglia’s operations teach or suggest the recited events. See Final Act. 3.
We understand the Examiner’s rejection to also find Teglia’s digital
identification code of the operator or its digital code of the position of the
operator in the program teaches or suggests the recited identifier of the
event. See Final Act. 3. The Examiner also finds Teglia calculates a digital
signature for each operator using a hashing function. See Final Act. 3. The
Examiner further finds that “[e]ach calculated signature uses the same hash
function and code of the specific operator, thus is the same parameter as a
previously calculated signature.” Final Act. 3. Even accepting these
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Appeal 2016-003559
Application 12/990,189
findings, we do not agree that the cited portions of Teglia teach or suggest
the recited calculating step.
Specifically, even accepting the Examiner’s findings, the Examiner
relies on Teglia’s disclosure of a hash function using an operator code as
teaching a hashing function having “parameters set by a value of the
traceability mark calculated for a preceding event.” Final Act. 3 (citing
Teglia Translation 3:3—7). Based on the Examiner’s mapping of Teglia’s
operations to the recited events, Teglia’s operator codes to the recited
identifier of events, and Teglia’s digital signatures to the recited traceability
marks, Teglia would have to teach the recited parameters of the hashing
function being set by a value of the digital signature calculated for a
preceding operation. As best understood, the Examiner maps Teglia’s
operator codes to the recited identifiers of events and finds the operator
codes are used to calculate the signature. See Final Act. 3 (finding “[t]he
identification code or digital code is an identifier” and “[e]ach calculated
signature uses the same hash function and code of the specific operator.”).
The Examiner, however, does not identify anything in Teglia that teaches or
suggests the recited parameters, let alone parameters which are set by a
value of the digital signature determined for a preceding operation. See id.
Furthermore, to the extent the Examiner finds Teglia’s operator codes
teach the recited parameters, we agree with Appellant that the Examiner
erred. First, the Examiner already relies on Teglia’s operator codes as
teaching the recited identifiers. Additionally, we fail to see how Teglia’s
disclosure of parameters based on operator codes, which have no relation to
digital signatures calculated for previous operations, teach or suggest the
recited limitation.
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Appeal 2016-003559
Application 12/990,189
On this record, we find the preponderance of the evidence supports
Appellant. Therefore, we are persuaded the Examiner erred in finding the
combination of Teglia and Mabry teaches or suggests the calculating step
recited in independent claim 1, and commensurately recited in independent
claims 4, 14, and 16. Dependent claim 3 and dependent claims 6 and 9
depend from independent claims 1 and 4, respectively. Dependent claim 17
depends from independent claim 16. Although the rejection of dependent
claim 17 includes Chan, Chan was not relied on to cure the deficiency with
respect to the calculating step. Accordingly, for the same reasons discussed
with respect to the independent claims, Appellant has persuaded us the
Examiner erred in rejecting dependent claims 3, 6, 9, and 16 under 35 U.S.C.
§ 103(a).
Claims 10-13
We disagree with Appellant that claims 10—13 “contain recitations
similar to at least some of those discussed . . . with respect to claim 1.” See
App. Br. 17. Accordingly, Appellant’s arguments are not commensurate
with the scope of claims 10—13. Specifically, claims 10-13 do not recite an
RFID chip, separate from a checking system, that receives an identifier of an
event from a scanner external to a device and calculates a traceability mark
using a previously calculated mark. See App. Br. 12—14; Reply Br. 3—5.
Appellant’s assertions regarding the proposed modification are also
inapposite to claims 10—13 because the modifications Appellant alleges lack
motivation or change the principle of operation of Teglia are not applicable
to claims 10—13. See App. Br. 15—16; Reply Br. 2, 6. Therefore, Appellant
has not demonstrated the Examiner erred in rejecting claims 10—13 under
35 U.S.C. § 103(a).
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Appeal 2016-003559
Application 12/990,189
DECISION2
For the reasons discussed above, we affirm the Examiner’s decision to
reject claims 10-13 under 35 U.S.C. § 103, and we reverse the Examiner’s
decision to reject claims 1,3,4, 6, 9, 14, 16, and 17 under 35 U.S.C. § 103.
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.
§ 41.50(f).
AFFIRMED-IN-PART
2 We leave to the Examiner to determine whether claims 12 and 13 meet the
requirements of 35 U.S.C. § 101. In particular, we leave to the Examiner the
question of whether claims directed to a “computer program including
instructions” or a “computer-readable storage medium storing a computer
program including instructions,” considered in light of Appellant’s
Specification are eligible subject matter. See Spec. 13:5—8 (stating “the
information medium may be a transmissible medium such as an electrical or
optical signal, which may be routed via an electrical or optical cable, by
radio or by other means”). Although the Board is authorized to reject claims
under 37 C.F.R. § 41.50(b), no inference should be drawn when the Board
elects not to do so. See MPEP § 1213.02.
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