Ex Parte Ross et alDownload PDFBoard of Patent Appeals and InterferencesApr 27, 201011265671 (B.P.A.I. Apr. 27, 2010) Copy Citation UNITED STATES PATENT AND TRADEMARK OFFICE ________________ BEFORE THE BOARD OF PATENT APPEALS AND INTERFERENCES ________________ Ex parte GARY A. ROSS, GRAHAM I. JOHNSON, BARRIE CLARK, and SIMON J. FORREST ________________ Appeal 2009-010710 Application 11/265,671 Technology Center 2800 ________________ Decided: April 27, 2010 ________________ Before ADRIENE LEPIANE HANLON, TERRY J. OWENS, and PETER F. KRATZ, Administrative Patent Judges. OWENS, Administrative Patent Judge. DECISION ON APPEAL STATEMENT OF THE CASE The Appellants appeal under 35 U.S.C. § 134(a) from the Examiner’s rejection of claims 1-7, 10 and 13-17, which are all of the pending claims. We have jurisdiction under 35 U.S.C. § 6(b). Appeal 2009-010710 Application 11/265,671 2 The Invention The Appellants claim a system and method for identifying the source of a substance incorporating one or more luminescent markers. The Appellants indicate that the identification determines whether the substance is authentic (Spec. 1:7-9). Claims 10 and 13 are illustrative: 10. A method of marking a substance to identify a source of the substance, the method comprising incorporating one or more luminescent markers within the substance, each of the one or more luminescent markers comprising a glass doped with one or more rare earth elements, wherein aspects of luminescent emission comprising a rate of change of emission versus time and a rate of change of emission versus wavelength from the one or more luminescent markers are used to identify the source of the substance. 13. A system for identifying a source of a substance incorporating one or more luminescent markers, each of the one or more luminescent markers comprising a glass doped with one or more rare earth elements, the system comprising: an excitation source which illuminates the substance to stimulate luminescent emission from at least one of the one or more luminescent markers; a detector which detects the stimulated luminescent emission; and a processor which (i) generates a luminescent signature based on one or more aspects of the detected luminescent emission, wherein the one or more aspects of the detected luminescent emission comprise a rate of change of emission versus time and a rate of change of emission versus wavelength, (ii) compares the generated luminescent signature with one or more pre-defined luminescent signatures, the one or more pre- defined luminescent signatures being associated with source identification information which identifies the source of the substance, and (iii) identifies the source of the substance based Appeal 2009-010710 Application 11/265,671 3 on a match between the generated luminescent signature and one of the one or more pre-defined luminescent signatures. The References Huston 6,211,526 B1 Apr. 3, 2001 McInerney 7,079,230 B1 Jul. 18, 2006 The Rejections Claims 1-7, 10 and 13-17 stand rejected under 35 U.S.C. § 103 over McInerney in view of Huston. OPINION The rejection is affirmed as to claims 1-7 and 13-17 and reversed as to claim 10. Issue Have the Appellants indicated reversible error in the Examiner’s determination that McInerney would have rendered prima facie obvious, to one of ordinary skill in the art, 1) generating a luminescent signature based on one or more aspects of detected luminescent emission, wherein the one or more aspects comprise a rate of change of emission versus time and a rate of change of emission versus wavelength (claims 1-7 and 13-17), or 2) using aspects of luminescent emission comprising a rate of change of emission versus time and a rate of change of emission versus wavelength to identify the source of a substance (claim 10)? Findings of Fact McInerney discloses a portable authentication device comprising an assembly for irradiating, with light, a light-sensitive compound-containing ink on a sample product or product package, an optical detector for detecting spectral properties emitted or absorbed by the irradiated ink, and a controller Appeal 2009-010710 Application 11/265,671 4 for determining the authenticity of the sample product or product package by comparing the spectral properties to a standard (col. 5, ll. 3, 12-19). McInerney discloses (col. 15, ll. 50-57): [A]ccording to one aspect of the present invention, intensity decay or a change in the quantity of light emission over time may be used to provide the sample characteristic. Alternatively, any such combination may be used to provide the sample characteristic. As used herein, the term “light emission” means intensity or quantity or intensity decay or change in quantity of light emitted from the sample. McInerney’s disclosure of a change in the quantity of light emission over time, where light emission is a change in the quantity of light emitted from the sample, is a disclosure of a rate of change of light emission versus time, i.e., a change over time of the change in the quantity of light emitted. The Appellants argue that McInerney does not disclose or suggest “using a rate of change of emission versus time and a rate of change of emission versus wavelength” (Br. 6). That argument is not convincing regarding claims 1-7 and 13-17 because it is directed toward a limitation which is not in the claims. See In re Self, 671 F.2d 1344, 1348 (CCPA 1982). The Appellants’ independent claims among claims 1-7 and 13-17, i.e., claims 1 and 13, require that the luminescent signature is based upon one or more aspects which comprise a rate of change of emission versus time and a rate of change of emission versus wavelength. Thus, only one aspect is required, and that aspect can be a rate of change of emission versus time as disclosed by McInerney. Claim 10, however, requires that the aspects comprise a rate of emission versus time and a rate of change of emission versus wavelength. Appeal 2009-010710 Application 11/265,671 5 Regarding that claim requirement the Examiner argues that McInerney discloses “rate of change of emission versus wavelength (figure 10, col. 19, ll. 50-62)” (Ans. 5). McInerney’s Figure 10 shows a graph of light intensity versus wavelength, and McInerney’s column 19, lines 50-62 explain that, as indicated in Figure 10, light-sensitive compounds are chosen that emit primarily at wavelengths that do not correspond directly with the background spectra peaks shown in that figure. Neither Figure 10 nor the discussion at column 19, lines 50-62 discloses a rate of change of emission versus wavelength. The Examiner argues that “changes in emission versus time and wavelength are inherent properties of luminescent markers, and thus have rates of change (slopes at any point on the graphs)” (Ans. 5). That argument is not persuasive even if it is correct because the Examiner has not established that it would have been prima facie obvious to one of ordinary skill to use the change in emission versus wavelength to identify the source of a substance. Conclusion of Law The Appellants have not indicated reversible error in the Examiner’s determination that McInerney would have rendered prima facie obvious, to one of ordinary skill in the art, generating a luminescent signature based on one or more aspects of detected luminescent emission, wherein the one or more aspects comprise a rate of change of emission versus time and a rate of change of emission versus wavelength (claims 1-7 and 13-17). The Appellants have indicated reversible error in the Examiner’s determination that McInerney would have rendered prima facie obvious, to one of ordinary Appeal 2009-010710 Application 11/265,671 6 skill in the art, using aspects of luminescent emission comprising a rate of change of emission versus time and a rate of change of emission versus wavelength to identify the source of a substance (claim 10). DECISION/ORDER The rejection of claims 1-7, 10 and 13-17 under 35 U.S.C. § 103 over McInerney in view of Huston is affirmed as to claims 1-7 and 13-17 and reversed as to claim 10. It is ordered that the Examiner’s decision is affirmed-in-part. No time period for taking any subsequent action in connection with this appeal may be extended under 37 C.F.R. § 1.136(a). AFFIRMED-IN-PART kmm CHRISTOPHER P. RICCI 1700 S. PATTERSON BLVD. DAYTON, OH 45479-0001 Copy with citationCopy as parenthetical citation