Ex Parte Sagan et al

Patent Trial and Appeal Board

Oct 29, 2014

11589080 (P.T.A.B. Oct. 29, 2014)

UNITED STATES PATENT AND TRADEMARK OFFICE
____________

BEFORE THE PATENT TRIAL AND APPEAL BOARD
____________

Ex parte ZBIGNIEW SAGAN, ALAIN FOUCOU, and
JEAN-PIERRE MASSICOT
__________

Appeal 2012-005014
Application 11/589,0801
Technology Center 3600
____________

Before HUBERT C. LORIN, ANTON W. FETTING, and
JAMES A. WORTH, Administrative Patent Judges.

LORIN, Administrative Patent Judge.

DECISION ON APPEAL

STATEMENT OF THE CASE
Zbigniew Sagan, et al. (Appellants) seek our review under 35 U.S.C.
§ 134 of the final rejection of claims 16–26 and 28–33. We have jurisdiction
under 35 U.S.C. § 6(b) (2002).

SUMMARY OF DECISION
We AFFIRM.2

1 The Appellants identify ATT-ADVANCED TRACK & TRACE, France,
as the real party in interest. Br. 1.
Appeal 2012-005014
Application 11/589,080

2
THE INVENTION
Claim 16, reproduced below, is illustrative of the subject matter on
appeal.
16. An authentication process for a group of products, which
comprises, for each product:
a step of marking said product to produce a mark
representative of a first content, the mark being generated by a
server; and
a step of associating a data carrier to said product,
wherein the association step comprises a step of reading the
mark produced during the marking step, and a step of coding
said read mark with a code key, to provide a representative item
of information, said data carrier bearing said item of
information.

THE REJECTIONS
The Examiner relies upon the following as evidence of
unpatentability:
Moore
Halperin

US 6,005,960
US 6,226,619 B1
Dec. 21, 1999
May 1, 2001
The following rejections are before us for review:
1. Claims 16, 17, 21–23, 25, 26, and 28–33 are rejected under 35 U.S.C.
§ 102(b) as being anticipated by Moore.
2. Claims 18–20 are rejected under 35 U.S.C. § 103(a) as being
unpatentable over Moore.

2 Our decision will make reference to the Appellants’ Appeal Brief (“Br.,”
filed June 27, 2011) and the Examiner’s Answer (“Ans.,” mailed Oct. 21,
2011).
Appeal 2012-005014
Application 11/589,080

3
3. Claim 24 is rejected under 35 U.S.C. § 103(a) as being unpatentable
over Moore and Halperin.

ISSUES
Did the Examiner err in rejecting claims 16, 17, 21–23, 25, 26, and
28–33 under 35 U.S.C. § 102(b) as being anticipated by Moore?
Did the Examiner err in rejecting claims 18–20 under 35 U.S.C.
§ 103(a) as being unpatentable over Moore?
Did the Examiner err in rejecting claim 24 under 35 U.S.C. § 103(a)
as being unpatentable over Moore and Halperin?

FINDINGS OF FACT
We rely on the Examiner’s factual findings stated in the Answer.
Additional findings of fact may appear in the Analysis below.

ANALYSIS
The rejection of claims 16, 17, 21–23, 25, 26, and 28–33 under 35 U.S.C.
§ 102(b) as being anticipated by Moore.
The Appellants argued claims 16, 17, 21–23, 25, 26, and 28–33 as a
group (Br. 9–16). We select claim 16 as the representative claim for this
group, and the remaining claims 17, 21–23, 25, 26, and 28–33 stand or fall
with claim 16. 37 C.F.R. § 41.37(c)(1)(vii) (2008).
The Examiner’s position is that Moore expressly describes the
claimed subject matter. See Ans. 5.
Appeal 2012-005014
Application 11/589,080

4
To distinguish over Moore, the Appellants argue that
the code key needs to be generated first by the generator server
100 [.] [T]hen the servers of rightholder subscribers such as the
server 110 adapt the code key to generate marks representative
of the code. The code provided represent a first content which
later will be compared with a second content by a data carrier.
Then the local production server 115 receives the marked
representative of the first content from the rightholder's server
and integrates this mark into the manufacturing model of a
product, packaging or label. The local production server then
provides variable information to be printed or marked on the
products, packaging or labels. This variable information is
intended to identify a product or a batch of products and to be
associated to the product being manufactured. (See page 7, line
8 to page 8, line 2 of the present application).
Br. 10–11.
The difficulty with the argument is that it is not commensurate in
scope with what is claimed. What is claimed is much broader in scope than
what is being argued.
Claim 16 is drawn to a method that comprises two steps: (a) marking
a product via a server and (b) associating a data carrier to said product. Step
(b) involves (1) reading the mark and (2) coding said read mark with a code
key. As a result of step (b), a representative item of information is provided
and the carrier will bear this item.
We do not see in claim 16 the argued-over necessity that a code key
needs to be generated first; the code key is adapted to generate marks
representative of the code; the code provided represents a first content which
later will be compared with a second content by a data carrier; the mark is
integrated into a manufacturing model of a product, packaging or label;
and/or variable information is provided to be printed or marked on the
Appeal 2012-005014
Application 11/589,080

5
products, packaging or labels, to name a few of the points made. Claim 16
is not limited to the extent argued. Cf. In re Self, 671 F.2d 1344, 1348
(CCPA 1982) (“Many of appellant’s arguments fail from the outset
because. . . they are not based on limitations appearing in the claims.”)
We take the same view of the argument made on page 13 of the Brief,
to wit:
Accordingly, Moore's technology is incapable of reading an
image of a mark, extracting content from the image to provide a
first content, reading information carried by a data carrier
associated to the product, decoding the information carried by
the data carrier to provide a second content, and detecting
inconsistencies between the first content and the second
content. (See page 5, line 34 to page 6, line 3 of the present
invention)[.]
“[R]eading an image of a mark, extracting content from the image to provide
a first content, reading information carried by the data carrier associated to
the product, decoding the information . . .” are not limitations in claim 16.
For the foregoing reasons, the arguments challenging the rejection of
claim 16 are unpersuasive as to error in the rejection of claim 16. We reach
the same conclusion as to claims 17, 21–23, 25, 26, and 28–33 which stand
or fall with claim 16.
The Brief includes an argument challenging the rejection of claims
30–33 that the “claims set forth functional limitations that are entitled to
patentable weight” (Br. 15).
The argument appears to take aim at this particular note that the
Examiner made in the Final Rejection (mailed June 24, 2010):
Examiner notes: A recitation directed to the manner in which a
claimed apparatus is intended to be used does not distinguish
the claimed apparatus from the prior art- if the prior art has the
Appeal 2012-005014
Application 11/589,080

6
capability to so perform. See MPEP 2114 and Ex parte
Masham, 2 USPQ2d 1647 (1987). Please note this applies to
claims 30-33.
Final Rejection, 11.
The argument is unpersuasive as to error in the rejection because it
ignores the fact that the Examiner did address the limitations in the claims.
See Final Rejection 10–12, repeated in the Answer at pages 7–9.
Notwithstanding the “note,” patentable weight was nevertheless given to all
limitations in the claims. The Examiner’s analysis treats each claim
limitation, showing precisely where in Moore each limitation is found to be
described. None of these factual findings is discussed in the Brief. Because
only the “note” is challenged, the more substantive analysis being ignored,
the argument is not persuasive as to error in the rejection.

The rejection of claims 18–20 under 35 U.S.C. § 103(a) as being
unpatentable over Moore.
Claims 18–20 further limit the marking step of claim 16 to constitute
dots or dashes.
The Examiner relies on Moore, pointing out that “Moore discloses a
marking system wherein software is designed to print graphic images that
are 64 dot vertical and 16 dots horizontal.” Ans. 10. The Examiner
explains:
Moore discloses UPC identification symbols or the like (col.
17, lines 15-37). . . . Moore discloses where the marking system
comprises a laser marker, cooperating with a fixture handling
means to mark fixtures prior to affixing to a garment (col. 20,
lines 25-39). It would have been obvious to one of ordinary
skill in the art at the time of the invention to modify the
Appeal 2012-005014
Application 11/589,080

7
marking system to include the process of constituting dots or
dashes in order to identify the marked content or products.
Ans. 10.
The Appellants challenge the rejection on the ground that Moore
discloses in Figures 3a and 3b “a data matrix which resembles a crossword
puzzle or a checker board” (Moore, col. 14, lines 32–33). “[T]his
complicated data matrix has no similarity to the simple dots and dashes
utilized by the present invention. That is, how could one of skill in the art
develop a system of dots and dashes from this checker board matrix
technology?” Br. 17.
The argument that Moore discloses a checker board matrix does not
fully address the substance of the rejection. As the Examiner found, Moore
discloses the use of “software . . . designed to print graphics images that are
64 dots vertical and 16 dots horizontal.” Ans. 10 (citing Moore, col. 18,
lines 26–28). Moore therefore does appear to cover marking wherein dots
are constituted as claimed. We see no argument in the Brief challenging this
finding of fact. Accordingly, the argument is unpersuasive as to error in the
rejection.

The rejection of claim 24 under 35 U.S.C. § 103(a) as being unpatentable
over Moore and Halperin.
The Appellants rely on arguments challenging the rejection of claim
16, on which claim 24 depends, to challenge the rejection of claim 24. See
Br. 17–18. For the same reasons we found those arguments unpersuasive as
to error in the rejection of claim 16, we find them unpersuasive as to error in
the rejection of claim 24.
Appeal 2012-005014
Application 11/589,080

8
CONCLUSIONS
The rejection of claims 16, 17, 21–23, 25, 26, and 28–33 under
35 U.S.C. § 102(b) as being anticipated by Moore is sustained.
The rejection of claims 18–20 under 35 U.S.C. § 103(a) as being
unpatentable over Moore is sustained.
The rejection of claim 24 under 35 U.S.C. § 103(a) as being
unpatentable over Moore and Halperin is sustained.

DECISION
The decision of the Examiner to reject claims 16–26 and 28–33 is
affirmed.
No time for taking any action connected with this appeal may be
extended under 37 C.F.R. § 1.136(a)(1).

AFFIRMED

llw