Ex Parte Macor

Patent Trial and Appeal BoardFeb 25, 2014

12156186 (P.T.A.B. Feb. 25, 2014)

UNITED STATES PATENT AND TRADEMARK OFFICE UNITED STATES DEPARTMENT OF COMMERCE United States Patent and Trademark Office Address: COMMISSIONER FOR PATENTS P.O. Box 1450 Alexandria, Virginia 22313-1450 www.uspto.gov APPLICATION NO. FILING DATE FIRST NAMED INVENTOR ATTORNEY DOCKET NO. CONFIRMATION NO. 12/156,186 05/30/2008 James J. Macor 39114.00006 2583 62282 7590 02/26/2014 LAW OFFICE OF PERRY M. FONSECA, PC 12 HAMILTON COURT LAWRENCEVILLE, NJ 08648 EXAMINER NEWAY, BLAINE GIRMA ART UNIT PAPER NUMBER 3788 MAIL DATE DELIVERY MODE 02/26/2014 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 JAMES J. MACOR ____________________ Appeal 2011-011961 Application 12/156,186 Technology Center 3700 ____________________ Before: JAMES P. CALVE, JILL D. HILL, and BEVERLY M. BUNTING, Administrative Patent Judges. CALVE, Administrative Patent Judge. DECISION ON APPEAL STATEMENT OF THE CASE Appellant appeals under 35 U.S.C. § 134 from the rejection of claims 1-20. App. Br. 3. We have jurisdiction under 35 U.S.C. § 6(b). We AFFIRM. Appeal 2011-011961 Application 12/156,186 2 CLAIMED SUBJECT MATTER Claims 1 and 11 are independent. Claim 1 is reproduced below. 1. An authentication and identification device for a collectable object, said device comprising: a holder formed for assembly with at least one collectable object to provide protection and preservation of said collectable object, said holder further being formed so as to resist disassembly and separation with said collectable object; and, a covert identification marking being nondetachably secured to said authentication and identification device, and said covert identification marking enabling a user to view at least one digital image including unique visual characteristics of said collectable object via a computerized device to aid said user in the authentication of said collectable object. REJECTIONS Claims 2, 8, 12, and 18 are rejected under 35 U.S.C. § 112, second paragraph, as indefinite. Claims 1-20 are rejected under 35 U.S.C. § 103(a) as unpatentable over Kernz (US 6,643,666 B1; iss. Nov. 4, 2003) and Lofgren (US 6,608,911 B2; iss. Aug. 19, 2003). ANALYSIS Claims 2, 8, 12, and 18 for indefiniteness The Examiner determined that the limitation “a means for a user to view information” in claims 2 and 12 and the limitation “a means for a user to view information related to said collectable object” in claims 8 and 18 are written in means-plus-function format but Appellant’s Specification fails to identify corresponding structure, material, or acts for the claimed function. Ans. 5. Appeal 2011-011961 Application 12/156,186 3 Appellant argues that the “convert identification marking”1 provides the means for a user to view additional information relating to a collectable object as set forth in Appellant’s Specification. App. Br. 7; Reply Br. 3. In support of this argument, Appellant asserts that the Specification discloses that an important objective of the invention is to provide a means for a user to easily and securely view additional relevant information of the actual collectable object such as population survival reports, current valuations, and related historical information and a covert identification marking 103 may enable the user to view information related to a collectable object 105 such as relevant historical information, current valuations, and survival populations. App. Br. 7-8 (citing Spec. para. [0014, 0025]).2 We agree with the Examiner that claims 2, 8, 12, and 18 are written in means-plus-function format. The use of “means for” in claims 2, 8, 12, and 18 creates a presumption that the claims are written in a means-plus-function format. Each “means for” is followed by a function – to view information or additional information related to said collectable object and there is no structure recited in those claims for performing the function. We agree with Appellant, however, that Appellant’s Specification and drawings disclose a covert identification marking 103 as the structure that corresponds to the claimed function. The covert identification marking 103 is nondetachably secured to the authentication and identification device 100 and it may be inherent to a certification services certification authentication label or it may 1 We treat Appellant’s argument relating to “convert identification marking” to refer to “covert identification marking” as recited in claims 2, 8, 12, and 18, and as disclosed in Appellant’s Specification. 2 These disclosures appear at page 8, lines 12-18 and page 17, lines 19-23 and Figures 1-6 of the application and drawings filed on May 30, 2008. Appeal 2011-011961 Application 12/156,186 4 comprise a separate label. Spec. 17, ll. 7-12; fig. 5. The Examiner has not addressed Appellant’s arguments or disclosure in Appellant’s Specification or otherwise explained why the disclosures asserted by Appellant do not disclose the corresponding structure for the recited means limitations. We do not sustain the rejection of claims 2, 8, 12, and 18. Claims 1-20 as unpatentable over Kernz and Lofgren Appellant argues claims 1-20 as a group. App. Br. 8-16. We select claim 1 as representative. 37 C.F.R. § 41.37(c)(1)(vii) (2011). Claims 2-20 stand or fall with claim 1. The Examiner found that Kernz discloses an authentication and identification device, as recited in claim 1, with an identification marking 86 but does not disclose the identification marking 86 as a covert identification marking. Ans. 5-6. The Examiner also found that Lofgren teaches the desirability of keeping readable signals covert in order to make the signals difficult to detect and reproduce by hackers. Ans. 6. The Examiner determined that it would have been obvious to keep the readable signals of Kernz (i.e., the identification marking) covert, as taught by Lofgren, to make the signals difficult to detect and reproduce by hackers. Ans. 6, 10. Appellant argues that Lofgren’s digital watermark and modulation signal cannot be substituted with the claimed covert identification marking that enables a user to view at least one digital image including unique visual characteristics of the collectable object. App. Br. 9. Appellant also argues that the proposed combination would change the principle of operation of the cited references and render them inoperable for their intended purpose. Id. These arguments are not persuasive of error in the Examiner’s rejection because the Examiner is not proposing to substitute Lofgren’s digital water Appeal 2011-011961 Application 12/156,186 5 mark or modulation signal for the identification marking of Kernz. Rather, the Examiner proposes to make the identification signals of Kernz covert, as taught by Lofgren, to make the signals difficult to detect and reproduce by hackers. See Ans. 6, 10-11. Appellant further argues that Lofgren teaches the mass production of holograms by means of a manufacturing process and a master hologram and therefore does not include unique appearance characteristics of a collectable object. App. Br. 9-10. Because Lofgren’s digitally watermarked hologram is replicated or mass produced on a plurality of carriers such as credit cards or smart cards, Appellant argues that the holograms cannot be substituted with the covert identification marking because Lofgren’s hologram does not correspond to each and every unique collectable object. App. Br. 10-11. These arguments are not persuasive because the Examiner does not propose to substitute Lofgren’s watermarks for Kernz’s identification marking but rather to make the identification marking 86 of Kernz a covert identification marking based on the teachings of Lofgren. Ans. 6, 10-11. Appellant also argues that the claims recite a covert identification marking that enables a user to view at least one digital image including unique visual characteristics and certification authenticity data relating to the collectable objects and Kernz and Lofgren fail to teach these limitations, which are recited in claims 1 and 11. App. Br. 12. These arguments do not persuade us of error in the Examiner’s findings that Kernz discloses an identification mark that enables a user to view unique visual characteristics and certification authenticity data for collectable objects and Lofgren teaches the use of covert identifications. See Ans. 6 (citing Kernz, col. 5, ll. 1-5 and col. 16, ll. 10-32; fig. 13). These arguments amount to an individual attack Appeal 2011-011961 Application 12/156,186 6 on the references where the Examiner has relied on the combined teachings of Kernz and Lofgren to render obvious the claimed subject matter. Appellant’s arguments that Kernz is not concerned with counterfeiting and exasperates the problem by providing a robust system for buying and trading coins on the Internet (App. Br. 12-14) is not commensurate with the scope of the claims and therefore is not persuasive. See Ans. 12. Moreover, Kernz discloses a device and system for certifying and grading of coins. See Kernz, col. 5, ll. 1-13; col. 16, ll. 14-34. We sustain the rejection of claims 1-20. DECISION We REVERSE the rejection of claims 2, 8, 12, and 18 under 35 U.S.C. § 112, second paragraph, for lack of definiteness. We AFFIRM the prior art rejection of claims 1-20. No time period for taking any subsequent action in connection with this appeal may be extended under 37 C.F.R. § 1.136(a)(1)(iv). AFFIRMED Klh