Ex Parte Dangmann et al

Patent Trials and Appeals Board

Jun 17, 2019

13123611 - (D) (P.T.A.B. Jun. 17, 2019)

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.
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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.").
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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.
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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.
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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
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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
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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,
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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).
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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.
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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
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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
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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
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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
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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.
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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").
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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
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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
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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.
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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.
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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.
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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).
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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.
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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
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