Ex Parte Dangmann et alDownload PDFPatent Trials and Appeals BoardJun 17, 201913123611 - (D) (P.T.A.B. Jun. 17, 2019) Copy Citation UNITED STA TES p A TENT AND TRADEMARK OFFICE APPLICATION NO. FILING DATE 13/123,611 02/26/2014 27081 7590 06/17/2019 OWENS-ILLINOIS, INC. ONE MICHAEL OWENS WAY Plaza One - Legal Department PERRYSBURG, OH 43551-2999 FIRST NAMED INVENTOR Oliver Dangmann 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 ATTORNEY DOCKET NO. CONFIRMATION NO. 19131 USA 9132 EXAMINER ARAQUE JR, GERARDO ART UNIT PAPER NUMBER 3689 MAIL DATE DELIVERY MODE 06/17/2019 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 OLIVER DANGMANN and GILLES DESHERAUD 1 Appeal 2018-002670 Application 13/123,611 Technology Center 3600 Before JENNIFER S. BISK, LARRY J. HUME, and JULIET MITCHELL DIRBA, Administrative Patent Judges. BISK, Administrative Patent Judge. DECISION ON APPEAL This is a decision on appeal under 35 U.S.C. § 134(a) of the Final Rejection of claims 1-20, which are all claims pending in the application. We have jurisdiction under 35 U.S.C. § 6(b ). We affirm. 1 Appellants identify the real party in interest as Owens-Illinois, Inc. Appeal Br. 3. Appeal 2018-002670 Application 13/123,611 BACKGROUND2 Appellants' disclosed embodiments and claimed invention relate to "a complete and totally secure solution for authenticating and tracing a product from production to the end consumer" by ensuring that neither a container, nor its contents, have been counterfeited using three separate authentication keys. Spec. 2:21-23, 3:1-5. Claim 1, reproduced below, is illustrative of the subject matter on appeal (emphasis added to contested prior-art limitation): 1. A method for authenticating a product in a container, and authenticating the container itself, comprising the steps of: a) applying to the container a first authentication code associated with the container; b) obtaining a first authentication key from said first authentication code and recording said first authentication key in a first database; c) applying to the container a second authentication code independent of said first authentication code and associated with the product in the container; d) obtaining a second authentication key from said second authentication code and recording said second authentication key in a second database separate from said first database; e) generating a third authentication key for the associated pair of said product and its container from a computer implemented combination of said first and 2 Throughout this Decision we have considered the Specification filed April 11, 2011 ("Spec."), the Final Rejection mailed April 28, 2017 ("Final Act."), the Appeal Brief filed September 28, 2017 ("Appeal Br."), the Examiner's Answer mailed November 20, 2017 ("Ans."), and the Reply Brief filed January 17, 2018 ("Reply Br."). 2 Appeal 2018-002670 Application 13/123,611 second authentication keys that is unique to that associated pair of said product and its container; and f) recording said third authentication key in a third database. Appeal Br. 35 (Claims App'x). REJECTIONS Claims 1-15 stand rejected under 35 U.S.C. § 112 ,r 2 3 as being indefinite. Final Act. 2--4. Claims 1, 2, 5, and 12 stand rejected under 35 U.S.C. § I03(a) as being unpatentable over US 2003/0116629 Al, published June 26, 2003 ("Sauve"). Final Act. 28-36. Claims 3 and 4 stand rejected under 35 U.S.C. § I03(a) as being unpatentable over the combination of Sauve and Tiama. 4 Final Act. 36-39. Claims 6-11, 13, and 14 stand rejected under 35 U.S.C. § I03(a) as being unpatentable over the combination of Sauve and Official Notice. Final Act. 39--44. Claims 15, 16, and 18 stand rejected under 35 U.S.C. § I03(a) as being unpatentable over the combination of Sauve and US 2008/0197969 Al, published August 21, 2008 ("Vogt"). Final Act. 44--52. Claim 17 stands rejected under 35 U.S.C. § I03(a) as being unpatentable over the combination of Sauve, Vogt, and Tiama. Final Act. 52-53. 3 Because this application was filed prior to March 16, 2013, we apply the pre-AIA version of§ 112. 4 Tiama refers to an internet publication, http://pdf.directindustry.com/pdf/ tiama-group/total-tracer-hot-end-laser-engraving-system/ 12 99 5-1964 2 9 .html retrieved on March 29, 2016. Total Tracer book September 19, 2008. 3 Appeal 2018-002670 Application 13/123,611 Claims 19 and 20 stand rejected under 35 U.S.C. § 103(a) as being unpatentable over the combination of Sauve, Vogt, and Official Notice. Final Act. 54--56. Claims 1-20 stand rejected under 35 U.S.C. § 101 as being directed to patent-ineligible subject matter. Final Act. 4--27. ANALYSIS We review the appealed rejections for error based upon the issues identified by Appellants, and in light of the arguments and evidence produced thereon. Ex parte Frye, 94 USPQ2d 1072, 107 5 (BP AI 2010) (precedential). To the extent Appellants have not advanced separate, substantive arguments for particular claims, or other issues, such arguments are waived. 37 C.F.R. § 4I.37(c)(l)(iv). We have considered all of Appellants' arguments and any evidence presented. We highlight and address specific findings and arguments for emphasis in our analysis below. Rejection of Claims 1-15 under 35 USC§ 1125 For purposes of the§ 112 rejection, Appellants argue claims 1-15 as a group. See Appeal Br. 9 (stating that claims 2-15 are allowable "[fJor at least the same reasons set forth above relating to the allowability of claim 1 "). Therefore, consistent with the provisions of 3 7 C.F .R. § 41.3 7 ( c )(l)(iv ), 5 The Claims Appendix has a typographical error in the listing of claim 6. Instead of "A method according to claim 1 or claim," we presume this should read "A method according to claim 1 or claim 5." See Amendment filed 6/30/2016. This same typo appears in the claims listings filed on 11/22/2016 and 4/10/2017. 4 Appeal 2018-002670 Application 13/123,611 we limit our discussion to independent claim 1. Dependent claims 2-15 stand or fall with independent claim 1. The Examiner rejects claims 1-15 under 35 U.S.C. § 112 ,r 2 as being indefinite because "the Examiner is uncertain as to the metes and bounds of the claims, and more specifically, whether the body of claim 1 satisfies the preamble." Final Act. 3. According to the Examiner, although claim 1 is directed to a method for authenticating a product, claim 15, which depends from claim 1, "positively recites the authentication process" showing that such authentication "does not occur until claim 15, thereby resulting in the body of claim 1 not satisfying what the preamble has set forth, i.e. a method of authenticating a product." Id. The Examiner adds that claim 1 "is, in fact, directed towards simply the storage of identification information that is supposed to, eventually, be used to authenticate the product and container" and "never explicitly recites any step that uses this information, but only explicitly recites the storage of the information." Id. at 4. "[T]he Examiner is also uncertain as to whether or not claim 15 is a claim that is supposed to depend from claim 1 or whether it should be an independent claim" given that "claim 1 states that it is a method of authenticating a product, whereas claim 15 is a method for verifying the authenticity and genuineness of a product." Final Act. 3. Appellants disagree, arguing that the Examiner improperly interprets the term "authenticating" to require a verification process. Appeal Br. 5-10; Reply Br. 2--4. According to Appellants, the term "authenticating" would be understood by a person of ordinary skill in the art to encompass both the process of preparing a container for later verification and the process of making such verification. Id. Appellants contend, therefore, that using a 5 Appeal 2018-002670 Application 13/123,611 proper interpretation of the term "authenticating," claims 1 and 15 properly recite subject matter consistent with the preamble. Id. at 5-10. We agree with Appellants that this rejection is not sustainable. First, we are unaware of, and the Examiner does not cite to relevant authority, any requirement that the body of the claim must "satisfy the preamble." In fact, "a preamble is not limiting [ on the subject matter of a claim] 'where a patentee defines a structurally complete invention in the claim body and uses the preamble only to state a purpose or intended use for the invention."' Catalina Marketing Int'!, Inc. v. Coolsavings.com, Inc., 289 F.3d 801, 808 (Fed. Cir. 2002) (quoting Rowe v. Dror, 112 F.3d 473, 478 (Fed. Cir. 1997)). Here, we understand the preamble of claim 1 to state the intended purpose of the recited method steps-"authenticating a product in a container, and authenticating the container itself," and, therefore, this language does not limit the scope of the claim. Moreover, we also agree with Appellants that the Specification uses the term "authenticating" broadly such that it encompasses the processes recited in the preambles of claims 1 and 15. Appeal Br. 6-8; Reply Br. 3-6. In particular, the Specification's use of the term "authenticating" includes both the process of preparing an item for authentication and the process of verifying a prepared item is authentic. For example, the Specification refers to the preparation process as "a first step of the authentication process" and also describes improving traceability and/or authenticity by allowing "authentication of a product and/or its container." Spec. 6: 1--4, 1: 10-24; see also 7:20-22 ("The authentication of the packaged product according to the method of the invention includes the step of applying a second authentication means AM2 for the product."); 9:28-10: 10 ("The method of 6 Appeal 2018-002670 Application 13/123,611 the invention further comprises a third step for authenticating the associated pair formed by the wine ... ," including generating a third authentication key); 11: 19-24 ("The present invention also relates to a method for verifying the authenticity."). A person of ordinary skill in the art would understand claim 1 as claiming the process of preparing a container with authenticating marks and generating and recording keys based on those marks such that both the container and the product in the container can later be verified. See, e.g., Spec. 5:27-11:7 (describing the method of preparing a container with two authenticating marks and generating and storing three respective keys for use in a verification process). Given the Specification's broad use of the term "authenticating," these steps are consistent with the preamble of claim 1-"A method for authenticating a product in a container, and authenticating the container itself." In addition, we read claim 15 as further claiming a verification process using the marks and keys generated by claim 1, from which claim 15 depends. See, e.g., id. at 11:25-12:25 ( describing the verification process using the previously described marks and keys). Again, because of the broad use of the term "authenticating" in the Specification, the body of claim 15 is consistent with the preamble of claim 15-"A method for verifying the authenticity and genuineness of a product packaged in a container .... " Further, given the broadest reasonable interpretation6 of "authenticating," we read the preamble of claim 15 to be a subset of the preamble of claim 1. 6 During prosecution, claims must be given their broadest reasonable interpretation when reading claim language in light of the specification as it would be interpreted by one of ordinary skill in the art. In re Am. Acad. of Sci. Tech. Ctr., 367 F.3d 1359, 1364 (Fed. Cir. 2004). Under this standard, 7 Appeal 2018-002670 Application 13/123,611 Accordingly, we do not sustain the Examiner's rejection of claims 1-15 under § 112. Rejection of Claims 1-5, 12, and 15 under 35 USC§ 103 For purposes of this§ 103 rejection, Appellants argue claims 1-5, 12, and 15 as a group. See Appeal Br. 25 (stating that claims 2-5 and 12 are not separately argued); id. at 28-29 (arguing that "Vogt does not remedy the deficiencies in Sauve outlined above with respect to claim 1 "). Therefore, consistent with the provisions of 37 C.F.R. § 4I.37(c)(l)(iv), we limit our discussion to independent claim 1. Dependent claims 2-5, 12, and 15 stand or fall with independent claim 1. Claim 1 recites first, second, and third authentication keys. The Examiner interprets "'authentication key' [as] nothing more than a label for the data and merely a description of what the data is supposed to represent." Final Act. 34. Based on this interpretation, the Examiner points to (1) the identification information stored in Sauve' s inventory bar code 114 as disclosing the first authentication key, (2) the identification information stored in Sauve' s distributor bar code 118 as disclosing the second authentication key, and (3) Sauve's disclosure of "a bar code ... representative of the location of the bottle 112" as the third authentication key. Final Act. 28-31 (citing Sauve ,r,r 55, 69-71, 80, 81). According to the Examiner, "the third authentication key, for tracking the location of the we interpret claim terms using "the broadest reasonable meaning of the words in their ordinary usage as they would be understood by one of ordinary skill in the art, taking into account whatever enlightenment by way of definitions or otherwise that may be afforded by the written description contained in the applicant's specification." In re Morris, 127 F.3d 1048, 1054 (Fed. Cir. 1997). 8 Appeal 2018-002670 Application 13/123,611 specific bottle with the specific contents" associates the first two authentication keys (identification information stored in Sauve's inventory and distributor bar codes) with the third authentication key by creating a record comprising the location information, the first authentication key, and the second authentication key. Id. at 30. Appellants argue that Sauve does not disclose "generating a third authentication key for the associated pair of said product and its container from a computer implemented combination of said first and second authentication keys that is unique to that associated pair of said product and its container." Appeal Br. 21-25. Specifically, Appellants contend that Sauve's location information is not an "authentication key" "generat[ed] from a computer implemented combination of said first and second authentication keys." Id. at 22. According to Appellants, "[t]here is no disclosure whatsoever as to how, exactly, the location information or disclosed bar code is generated, much less that it is specifically generated from a computer implemented combination of two other authentication keys respectively associated with the bottle 112 and the product contained therein." Id. The Examiner, however, explains that "all three pieces of information [ the identification information stored in Sauve' s inventory and distributor bar codes and the location information] together form the record" that is Sauve's location information. Final Act. 30-31; Ans. 10-15. The Examiner notes that Sauve's location information is consistent with the Specification's description of the third authentication key, which does not give implementation details. Final Act. 31; Ans. 12-13. 9 Appeal 2018-002670 Application 13/123,611 We agree with the Examiner that Sauve's location information record is encompassed by claim 1 's recitation of "generating a third authentication key for the associated pair of said product and its container from a computer implemented combination of said first and second authentication keys." We are not persuaded by Appellants' contention that "associating information together in a database and generating an authentication key as a computer implemented combination of two different authentication keys are not the same." Reply Br. 12-13. Appellants do not further elaborate on this contention and it is unclear why association together in a database is not equivalent to a computer implemented combination. To the contrary, we understand associating values in a database to be a type of computer implemented combination. Appellants also contend that Sauve' s location information is not "unique to that associated pair of said product and its container." Appeal Br. 23-25. According to Appellants, Sauve's "location information and bar code correspond to a particular location," and "the same location information/bar code is used for every container pair, and thus, is not unique." Id. at 23. Appellants' argument, however, is based on an understanding that only the location information qualifies as the third authentication key, and Appellants do not explain why the third authentication key cannot encompass the entire record, including all three pieces of information. Appellants do not point to anything in the Specification that restricts an authentication key to being one piece of information in a record. We also do not see any language in the Specification that restricts an authentication key to being one portion of a database record. The Specification notes only that authentication keys are 10 Appeal 2018-002670 Application 13/123,611 extracted from authentication codes (for example by optical readers) and are recorded in databases. See e.g. Spec. 2:10-12; 4:21-26. In certain preferred embodiments, an authentication key is said to "comprise a numerical or alphanumerical code." Spec. 4:12-14; 7:4--7. No other details or restrictions are placed on the contents or implementation details of authentication codes. Based on the Specification's broad use of the term "authentication key," we agree with the Examiner that the broadest reasonable interpretation of the term encompasses a label representing data. We do not find error in the Examiner's contention that a person of ordinary skill in the art would understand a database record containing all three pieces of the identification information stored in Sauve' s inventory and distributor bar codes and location information to disclose the claimed third authentication key, which is generated from a computer implemented combination of said first and second authentication key and is unique to that associate pair of said product and its container. In the Reply Brief, Appellants argue that Sauve does not disclose that the three authentication keys are recorded in three separate databases, but that "it appears from the disclosure of Sauve that all three 'authenitcation keys' are recorded in a single database, not three separate databases." Reply Br. 12-13. This is a new argument not raised in the Appeal Brief and, therefore, not entitled to consideration. See 37 C.F.R. § 4I.41(b)(2) ("Any argument raised in the reply brief which was not raised in the appeal brief, or is not responsive to an argument raised in the examiner's answer ... will not be considered by the Board for purposes of the present appeal, unless good cause is shown."); Appeal Br. 20-25. However, even if considered, this 11 Appeal 2018-002670 Application 13/123,611 argument is not persuasive. The Examiner finds that "it would have been obvious to one of ordinary skill in the art of computing that if one database that contains, at least, two pieces of information can be stored in two databases then nth pieces of information can be separated into nth ( or any other amount) of databases" and "it would have been a routine skill for one having skill in the art." Final Act. 33-34. Appellants do not address the rejection as articulated, that a person of ordinary skill in the art would have found it obvious, based on the teachings of Sauve that recording each of the authentication keys in a different database. Accordingly, we sustain the Examiner rejection of claims 1-5, 12, and 15 as obvious over Sauve. Rejection of Claims 6-11, 13, and 14 under 35 USC§ 103 The Examiner takes Official Notice that: (1) "a transparent three- dimensional random physical signature that is applied and visible on a container via a thermosetting polymer, data matrix code, and bubble tag are notoriously old and well-known technologies and techniques for associating and/or applying identification information to an item," as recited in claims 6-10 and 13 (Final Act. 40); (2) "tamper evident film is a notoriously old and well-known technique used by product manufacturers in order to demonstrate that their product has never been opened or tampered with," as recited by claim 11 (id. at 42); and (3) "it is old and well-known in the art for the information that is contained in the identification means, such as barcodes and the like, to represent a wide range of information, such as, but not limited to, numeric or alphanumeric," as recited by claim 14 (id. at 43). Appellants argue that "the requisite documentary evidence has not been provided, and therefore, Appellant[ s] respectfully submit[] that the 12 Appeal 2018-002670 Application 13/123,611 reliance of Official Notice without such evidence is improper." Appeal Br. 26. We are not persuaded that the Examiner erred by taking Official Notice. Appellants have not made any specific challenge to the facts of which the Examiner took Official Notice. Nor have Appellants proffered any information or argument that, on its face, casts reasonable doubt regarding the justification of the Official Notice. See In re Boon, 439 F.2d 724, 728 (CCPA 1971) (an applicant has the right to challenge the official notice and demand production of evidence in support thereof, provided such challenge is accompanied by adequate information or argument that, on its face, creates a reasonable doubt regarding the circumstances justifying the official notice). Thus, we agree with the Examiner (Ans. 15-16) that Appellants have not adequately traversed the Examiner's taking of Official Notice, so as to require the Examiner to produce supporting documentary evidence. Moreover, as noted by the Examiner (Final Act. 40-41; Ans. 16), the Specification confirms the conventional nature of the limitations of which the Examiner has taken Official Notice by indicating they are sufficiently well-known that no particulars of the limitations need be described. See Spec. 3 :23-27 (reciting, but not describing, a "three dimensional random physical signature" that "is preferably implemented such that it is visible on a label applied to the container"), 4: 1-3 (same for a signature that is "randomly generated into a transparent material, which can be, for instance, a thermosetting polymer"), 8:21-26 (same for a signature that is "formed ... , by a random generation of bubbles within a transparent material such as a thermosetting polymer"), 9:9-12 (describing "[a] particularly efficient and 13 Appeal 2018-002670 Application 13/123,611 secure solution for applying 3D random signatures on to labels is provided by the French company PROOFTAG S.A.S using the BUBBLE TAG® technology"), 9: 17-18 (reciting, but not describing, a "3D random signature" that may also "comprise a traceability code such as a Datamatrix code"). Accordingly, we sustain the Examiner rejection of claims 6-11, 13, and 14 as obvious over Sauve and Official Notice. Rejection of Claims 16-18 under 35 US.C. § 103 For purposes of this§ 103 rejection, Appellants argue claims 16-18 as a group. See Appeal Br. 32 (stating that claims 17 and 18 are allowable for the same reasons as argued for claim 16). Therefore, consistent with the provisions of 3 7 C.F .R. § 41.3 7 ( c )(l)(iv ), we limit our discussion to claim 16. Dependent claims 1 7 and 18 stand or fall with independent claim 16. Appellants argue "Vogt does not teach the limitation of claim 16 of obtaining a product authentication key only if a previously obtained container authentication key corresponds to an authentication key to which it was compared." Appeal Br. 30. According to Appellants, Vogt describes "a neck seal identification number may be scanned by a first reader, and the bottle tag number may be retrieved from an RFID tag by a second reader" and "[a] computer server may then authenticate the contents of the bottle if there is an association between the neck seal identification number and the bottle tag number." Id. (citing Vogt ,r 83). Appellants argue that Vogt teaches that both the neck seal and bottle tag numbers are retrieved "regardless of whether a first one of the 'keys' corresponds to a stored 'key' to which it was compared." Id. 14 Appeal 2018-002670 Application 13/123,611 Appellants also argue that neither Vogt nor Sauve teaches "generating a security authentication key from a computer implemented combination of the container and the product authentication keys." Appeal Br. 30-31. We are not persuaded by this argument for the reasons discussed above with respect to claim 1. Instead, we find Sauve discloses the recited security authentication key generated from a computer implemented combination of the container and the product authentication keys. The Examiner also explains that Vogt discloses generating a security authentication key because "Vogt discloses that the bottle tag and neck seal are stored together as a file that identifies the bottle in a global registry" and that "the information is only obtained, i.e. the bottle is verified, if the information on the bottle matches with what is stored in the global registry." Ans. 17. As for showing that the security authentication key is only generated "if the product authentication key obtained by said optical reader corresponds to one of the product authentication keys to which it was compared," Vogt states that the step of verifying the authenticity of the bottle is done "responsive to identifying an association between a neck seal identification number imprinted on the neck seal and the retrieved bottle tag number." Vogt ,r 103 (stating that in one embodiment, "the server authenticates the contents of the bottle, responsive to accessing a database and verifying the association between a neck seal identification number 404 and the retrieved tag number"); see also ,r,r 10, 11, 94, 104 (including the language "responsive to identifying an association between a neck seal identification number imprinted on the neck seal and the retrieved bottle tag number"). 15 Appeal 2018-002670 Application 13/123,611 Further, under the broadest reasonable interpretation of claim 16, and as a matter of claim construction, it is possible that the conditional limitation of "generating a security authentication key" may never occur. See Ex parte Schulhauser, Appeal No. 2013-007847, at *9 (PTAB April 28, 2016) (precedential). If the condition is not met-i.e., if the authentication key obtained by the optical reader does not correspond to one of the product authentication keys to which it was compared-then the step of generating a security authentication key need not be performed. See id. at *6-7. Based on the claim limitations as written, the broadest reasonable interpretation of claim 16 encompasses an instance in which the method ends before generating a security authentication key. See id. at *8. Accordingly, we sustain the Examiner rejection of claims 16 as obvious over Sauve and Vogt as well as the rejection of claims 17 and 18, which are not argued separately. Appeal Br. 32. Rejection of Claims 19 and 20 under 35 USC§ 103 For purposes of the§ 103 rejection, Appellants argue claims 19 and 20 as a group. See Appeal Br. 32-34. Therefore, consistent with the provisions of 37 C.F.R. § 4I.37(c)(l)(iv), we limit our discussion to claim 19. As discussed above with respect to claims 6-11, 13, and 14, the Examiner takes Official Notice that "a data matrix code and bubble tag are notoriously old and well-known technologies and techniques for associating and/or applying identification information to an item," as recited by claim 19 (Final Act. 54); "it is old and well-known in the art for the information that is contained in the identification means, such as barcodes and the like, to 16 Appeal 2018-002670 Application 13/123,611 represent a wide range of information, such as, but not limited to, numeric or alphanumeric," as recited by claim 20 (id. at 55). Appellants rely on the same arguments relied upon for claims 6-11, 13, and 14. Appeal Br. 33-34. For the reasons discussed above, we sustain the Examiner rejection of claims 19 and 20 as obvious over Sauve and Official Notice. Rejection of Claims 1-5 and 7-20 under 35 US.C. § 101 Section 101 of the Patent Act provides that "any new and useful process, machine, manufacture, or composition of matter, or any new and useful improvement thereof' is patent eligible. 35 U.S.C. § 101. But the Supreme Court has long recognized an implicit exception to this section: "'Laws of nature, natural phenomena, and abstract ideas are not patentable."' Alice Corp. v. CLS Bankint'l, 573 U.S. 208,216 (2014) (quoting Ass 'nfor Molecular Pathology v. Myriad Genetics, Inc., 569 U.S. 576, 589 (2013)). To determine whether a claim falls within one of these excluded categories, the Court has set out a two-part framework. The framework requires us first to consider whether the claim is "directed to one of those patent-ineligible concepts." Alice, 573 U.S. at 217. If so, we then examine "the elements of each claim both individually and 'as an ordered combination' to determine whether the additional elements 'transform the nature of the claim' into a patent-eligible application." Alice, 573 U.S. at 217 (quoting Mayo Collaborative Servs. v. Prometheus Labs., Inc., 566 U.S. 66, 78, 79 (2012)). That is, we examine the claims for an "inventive concept," "an element or combination of elements that is 'sufficient to ensure that the patent in practice amounts to significantly more than a patent 17 Appeal 2018-002670 Application 13/123,611 upon the [ineligible concept] itself."' Alice, 573 U.S. at 217-18 (alteration in original) (quoting Mayo, 566 U.S. at 72-73). The Patent Office recently issued guidance regarding this framework. See USPTO, 2019 Revised Patent Subject Matter Eligibility Guidance, 84 Fed. Reg. 50 (Jan. 7, 2019) ("Revised Guidance"). Under the Revised Guidance, to decide whether a claim is "directed to" an abstract idea, we evaluate whether the claim (1) recites subject matter falling within an abstract idea grouping listed in the Revised Guidance and (2) fails to integrate the recited abstract idea into a practical application. See Revised Guidance, 84 Fed. Reg. at 51. If the claim is "directed to" an abstract idea, as noted above, we then determine whether the claim recites an inventive concept. The Revised Guidance explains that when making this determination, we should consider whether the additional claim elements add "a specific limitation or combination of limitations that are not well- understood, routine, conventional activity in the field" or "simply append[] well-understood, routine, conventional activities previously known to the industry." Revised Guidance, 84 Fed. Reg. at 56. For purposes of the§ 101 rejection, Appellants argue claims 1-20 together as a group. See App. Br. 5---6; Reply Br. 2-3. Therefore, consistent with the provisions of 37 C.F.R. § 4I.37(c)(l)(iv), we limit our discussion to independent claim 1. Independent claims 8 and 15 and dependent claims 2- 7, 9-14, and 16-20 stand or fall with independent claim 1. With these principles in mind, we tum to the Examiner's§ 101 rejection. 18 Appeal 2018-002670 Application 13/123,611 The Judicial Exception-Abstract Idea The Examiner determined the claims are directed to "an abstract idea of fraud prevention by way of information management," which is a "fundamental economic practice and an idea of itself." Final Act. 5. For the reasons explained below, we agree that the claims recite an abstract idea. In particular, limitations (b ), ( d), ( e ), and ( f) recite manipulating data (limitations (b), (d), and (e)) and storing data (limitation (f)). These limitations, under their broadest reasonable interpretation, cover steps that could be performed in the mind or with pencil and paper. Similar claims have been found ineligible by the Federal Circuit. For example, the Federal Circuit continues to "'treat[] analyzing information by steps people go through in their minds, ... without more, as essentially mental processes within the abstract-idea category."' Synopsys, Inc. v. Mentor Graphics Corp., 839 F.3d 1138, 1146-47 (Fed. Cir. 2016) (quoting Elec. Power Grp., LLC v. Alstom S.A., 830 F.3d 1350, 1354 (Fed. Cir. 2016)). Accordingly, we conclude the claims recite concepts performed in the human mind (including an observation, evaluation, judgement, or opinion) which is a mental process identified in the Revised Guidance, and thus an abstract idea. 7 Revised Guidance, 84 Fed. Reg. at 52, 53 (listing "[m]ental 7 Our reviewing court recognizes that "[ a ]n abstract idea can generally be described at different levels of abstraction." Apple, Inc. v. Ameranth, Inc., 842 F.3d 1229, 1240 (Fed. Cir. 2016). That need not and, in this case does not, "impact the patentability analysis." Id. at 1241. "The Board's slight revision of its abstract idea analysis does not impact the patentability analysis." Id. Moreover, merely combining several abstract ideas does not render the combination any less abstract. RecogniCorp, LLC v. Nintendo Co., 855 F.3d 1322, 1327 (Fed. Cir. 2017) ("Adding one abstract idea (math) to another abstract idea ... does not render the claim non-abstract."); see also FairWarning IP, LLC v. Iatric Sys., Inc., 839 F.3d 1089, 1093-94 (Fed. 19 Appeal 2018-002670 Application 13/123,611 processes----concepts performed in the human mind (including an observation, evaluation, judgment, opinion)"). The Judicial Exception-Practical Application If a claim recites a judicial exception, we determine whether the recited judicial exception is integrated into a practical application of that exception by: (a) identifying whether there are any additional elements recited in the claim beyond the judicial exception( s ); and (b) evaluating those additional elements individually and in combination to determine whether they integrate the exception into a practical application. If the recited judicial exception is integrated into a practical application, the claim is not directed to the judicial exception. In addition to the abstract steps recited in limitations (b ), ( d), ( e ), and (f), claim 1 further recites "(a) applying to the container a first authentication code associated with the container," and"( c) applying to the container a second authentication code independent of said first authentication code and associated with the product in the container." Appeal Br. 35 (Claims App'x). For the reasons discussed below, we conclude limitations (a) and (c) integrate the abstract idea into a practical application as determined under at least one of the relevant MPEP sections. 8 Specifically, these limitations Cir. 2016) ( determining the pending claims were directed to a combination of abstract ideas). 8 See MPEP § 2106.0S(a}-(c), (e}-(h). Citations to the MPEP herein refer to revision [R-08.2017]. Sections 2106.0S(a), (b), (c), and (e) are indicative of integration into a practical application, while sections 2106.0S(f), (g), and (h) relate to limitations that are not indicative of integration into a practical application. 20 Appeal 2018-002670 Application 13/123,611 recite that the first and second authentication codes, from which the authentication keys are obtained, are applied to a container. Although the Specification does not specifically define a container, it makes clear that it is a package containing a product-a tangible object. Spec. 1 :5-9 ("The invention finds a dedicated application in the packaging of high value liquid products, particularly wines, spirits and fragrances."). The invention helps to prevent counterfeiting of such container and its contents, "either by repackaging ( or re-filling) from original containers into fake ones or by the replacement of genuine products by counterfeit products in original or fake containers." Id. These limitations contribute to the claims such that they are analogous to the claims found to encompass patentable subject matter in Diamond v. Diehr, 450 U.S. 175, 185 (1981), and Classen Immunotherapies, Inc. v. Biogen IDEC, 659 F.3d 1057 (Fed. Cir. 2011) (decision on remand from the Supreme Court, which had vacated the lower court's prior holding of ineligibility in view of Bilski v. Kappas). In Diehr, the Court evaluated the additional non-abstract limitations, and found them to be meaningful, because they sufficiently limited the use of the (abstract idea) mathematical equation to the practical application of molding rubber products. MPEP § 2106.05(e) (citing Diehr, 450 U.S. at 184, 187). In Classen, the Court held that, although the analysis step was an abstract mental process that collected and compared known information, the (practical application) immunization step was meaningful because it integrated the results of the analysis into a specific and tangible method that resulted in the method "moving from abstract scientific principle to specific application." MPEP § 2106.05(e) (citing Classen, 659 F.3d at 1066-68). 21 Appeal 2018-002670 Application 13/123,611 Similarly, we find that limitations (a) and (c) sufficiently limit the use of the abstract idea encompassed by the other limitations to the specific and tangible application of containers and products. Accordingly, we conclude, when the claim is considered as a whole, the recited judicial exception is integrated into a practical application as determined under MPEP sections 2106.05(e) cited above, such that the claim is patent-eligible, thus concluding the eligibility analysis. Accordingly, based upon the findings and legal conclusions above, on this record and in consideration of the Revised Guidance, we are persuaded the claims are directed to patent-eligible subject matter, such that we do not sustain the§ 101 rejection of claim 1, and 2-20 which are not argued separately. Appeal Br. 10-20. CONCLUSION We conclude Appellants have demonstrated the Examiner erred in rejecting claims 1-15 under 35 U.S.C. § 112. We conclude Appellants have not demonstrated the Examiner erred in rejecting claims 1-20 under 35 U.S.C. § 103(a). We, therefore, sustain these rejections. We conclude Appellants have demonstrated the Examiner erred in rejecting claims 1-20 under 35 U.S.C. § 101. DECISION Because we affirm at least one ground of rejection with respect to each claim on appeal, we affirm the Examiner's rejection of claims 1-20. 22 Appeal 2018-002670 Application 13/123,611 No time period for taking any subsequent action in connection with this appeal may be extended under 37 C.F.R. § 1.136(a)(l )(iv). See 37 C.F.R. § 4I.50(f). AFFIRMED 23 Copy with citationCopy as parenthetical citation