DETAILED ACTION
Notice of Pre-AIA or AIA Status
The present application, filed on or after March 16, 2013, is being examined under the first inventor to file provisions of the AIA .
Response to Arguments
Applicant's arguments filed May 20, 2025 have been fully considered but they are not persuasive.
Argument #2: Objections to the use of “such as NFC tag”
The Applicant again makes a reference to the patent application US 15/079,907, the YouTube marketing video, Amazon’s products, etc. and argues whether the NFC tags have been used and/or known in public domain, and/or whether this NFC tag is considered concealed or not. These points of arguments are not relevant to the issues at that. That is, the Applicant fails to clearly point out the support of this claim features “NFC tags” in the original Specification. As discussed previously, the Applicant’s own Specification did not describe and/or disclose NFC tags. Thus, this claim feature is considered as new matters and cannot be entered.
The Applicant further argues on page 4 of Remarks that the Applicant uses the term “memory” to imply the use of concealed code technologies. The Examiner respectfully disagrees as the term “memory” is no way in itself imply the “concealed code” technologies or “NFC tags” technology as currently claimed by the Applicant. One of ordinary skilled in the art could conceptualize the term “memory” as a device that is used to store data or program (e.g., a RAM, a ROM, etc.). However, the term memory does not inherently mean NFC tags as claimed.
The Applicant further presents a NFC tag sold on Amazon to justify as the support of claimed invention. The Examiner notes that while one of ordinary skilled in the art would know exactly what a NFC tag looks like. However, nowhere in the Applicant’s specification disclose the invention includes a NFC tag. Therefore, this argument is not persuasive because the Applicant still fails to show the support of this claim feature.
The Applicant further argues on page 7 of Remarks that the claimed invention uses both visible and concealed code technologies and uses Figure 1 as the support of this claim feature. Again, the Specification and/or Figure 1 fails to illustrates a NFC tags, let alone, the NFC tags is being visible or concealed.
Argument #4: Applicant’s Arguments Objecting Obviousness with Stickybits
1. Direct Viewing of Digital Content:
The Applicant argues on page16 of Remarks that Stickbybits discloses a page “The Wall” listing all contents added to this bar code while no “Wall” is used in the claimed invention. Stickybits discloses the use of the unique bar code to retrieve the stored video (timestamp 0:57-1:07) and posting digital content by using the scanned bar code (timestamp 0:28, 0:31-0:33, and 1:00-1:07). It is noted that the teachings of the “Wall” in Stickybits does not preclude the teachings of the claimed features.
Recording of Digital Content:
The Applicant argues that the invention enables the direct recording of digital content to be associated with the unique identification code while Stickybits is uploaded only. The Examiner directs the Applicant to timestamp 0:28, 0:31-0:33, and 1:00-1:07 for the teachings of this argued features where the digital content is posted and associated with the bar code.
The Applicant further argues that in Stickybits, content can only be uploaded, and cannot be recorded from the application itself. It is important to note that both claims and the Applicant’s own specification fails to recite, describe and/or disclose the argued features. That is, the specification fails to describes that the content is to be “recorded from an application”. Due to the absence of the disclosure, it is in the Examiner’s position to give the broadest reasonable interpretation of the claim language. In this case, the term “record” is broadly and reasonably interpreted as storing electronic information in databases, or digital files. In light of Stickybit’s disclosure, the digital content is posed and associated with the bar code. In other words, the digital content is “recorded”.
User Authorization and Control:
This point of arguments is moot as claims fails to recite and/or define the argued features.
User Account Requirement:
This point of arguments is moot as claims fails to recite and/or define the argued features.
Privacy Considerations:
This point of arguments is moot as claims fails to recite and/or define the argued features.
Argument #5: Applicant’s Arguments to Objections to Obviousness Supported by Sales and Industry
It is noted that gross sales figures do not show commercial success absent evidence as to market share, Cable Electric Products, Inc. v. Genmark, Inc., 770 F.2d1015, 226 USPQ 881 (Fed. Cir. 1985), or as to the time period during which the product was sold, or as to what sales would normally be expected in the market, Ex parte Standish, 10 USPQ2d 1454 (Bd. Pat. App. & Inter. 1988).
The Applicant again argues that there is a demand for the invention as a novelty to the market. However, the Applicant fails to show evidence that there is a strong demand related to the Applicant’s own invention or product. More importantly, the Applicant fails to articulate as to how and/or why the cited references do not teach the claimed invention.
Argument #6: Applicant’s Arguments to Obviousness of Combined of Mu and Stickybits Public Information
The Applicant argues again argues XML is an extensible markup language used for transferring data between system and the media content isn’t directly streamed. As previously pointed out by the Examiner, Mu clearly discloses text, graphics and multimedia data, which is digital content of claim language. Mu also discloses this digital content is transmitted to the mobile using scanned QR code. That is, obtaining digital content associated with the unique identification of claim language.
The Applicant then argues on page 18 that Mu filed the application after the first iPhone was launched. However, this point of arguments is moot as Mu still reads on the argued claim features regardless of the technologies use in Mu.
Argument: Claims Rejections under 35 USC 112(a)
The Applicant stated on page 26 of Remarks that the original claim 3 recites the product provided artifact is a visible code. While the Examiner agrees with the Applicant with this statement, the Applicant still fails to point out the support where the Specification expressly teaches or suggests the “SL Code” and “NFC tag” is being concealed. As matter of fact, the Specification did not even disclose the term “NFC tag”.
Furthermore, it is incorrect to argues that the term “memory” is equivalent to NFC tags because 1) the Specification fails to disclose the NFC tags, and 2) one of ordinary skilled in the art would not limit the term “memory” to NFC tags. In fact, the term “memory” is broadly and reasonably interpreted as temporary or long-term storage for data. Thus, previous 35 USC 112(a) rejections were proper and therefore, they are maintained.
Claim Rejections - 35 USC § 112(a)
The following is a quotation of the first paragraph of 35 U.S.C. 112(a):
(a) IN GENERAL.—The specification shall contain a written description of the invention, and of the manner and process of making and using it, in such full, clear, concise, and exact terms as to enable any person skilled in the art to which it pertains, or with which it is most nearly connected, to make and use the same, and shall set forth the best mode contemplated by the inventor or joint inventor of carrying out the invention.
The following is a quotation of the first paragraph of pre-AIA 35 U.S.C. 112:
The specification shall contain a written description of the invention, and of the manner and process of making and using it, in such full, clear, concise, and exact terms as to enable any person skilled in the art to which it pertains, or with which it is most nearly connected, to make and use the same, and shall set forth the best mode contemplated by the inventor of carrying out his invention.
Claims 25, 29, 34 and 35 are rejected under 35 U.S.C. 112(a) or 35 U.S.C. 112 (pre-AIA ), first paragraph, as failing to comply with the written description requirement. The claim(s) contains subject matter which was not described in the specification in such a way as to reasonably convey to one skilled in the relevant art that the inventor or a joint inventor, or for applications subject to pre-AIA 35 U.S.C. 112, the inventor(s), at the time the application was filed, had possession of the claimed invention.
The Applicant first introduced in the amended Specification dated March 07, 2015 by adding the phrase “SLCode can be concealed” to paragraphs 0029, 0034, 0037, and 0042 of the Specification.
The Applicant further amended Specification on March 20, 2020 to include the concept of a “NFC tag” being “concealed”.
While the original Specification dated November 10, 2014 disclosed the “SL Code”; however, the original Specification did not describe and/or suggest either implicitly and/or explicitly that the “SLCode” being concealed code. More importantly, the original Specification failed to disclose the “NFC tag”.
Furthermore, it is noted that even though Figure 1 illustrates an item # 1 being the SL code, and Figure 2 illustrates the SL Code; however, these figures failed to clearly illustrate and/or describe in any way so that one of ordinary skilled in the art could conceptualize the SLCode as illustrated in Figs 1 & 2 are the NFC tag, and being concealed.
The Applicant admits on page 21 of Remarks dated July 17, 2023 that the “Applicant acting as Pro-Se realized a day after submitting the original application, and still prior to pre-examination, an updated version adding the work “concealed” to add calriy while being fully supported by original drawing, original specification words “SL Code such as QR Code” “visible code” “comprises a memory”.
As the Examiner noted previously, the first time the Applicant introduced the term “SLCode can be concealed” was in the amended Specification dated March 07, 2015 (paragraphs 0029, 0034, 0037, and 0042 of the Specification).
Since the original specification fails to support the claim features “SL Code can be concealed, and “NFC tags”, the Examiner respectfully suggests the Applicant to amend and/or cancel claim language contained new matters as discussed above.
Claim Rejections - 35 USC § 112(b)
The following is a quotation of 35 U.S.C. 112(b):
(b) CONCLUSION.—The specification shall conclude with one or more claims particularly pointing out and distinctly claiming the subject matter which the inventor or a joint inventor regards as the invention.
The following is a quotation of 35 U.S.C. 112 (pre-AIA ), second paragraph:
The specification shall conclude with one or more claims particularly pointing out and distinctly claiming the subject matter which the applicant regards as his invention.
Regarding claim 25, the phrase "such as" renders the claim indefinite because it is unclear whether the limitations following the phrase are part of the claimed invention. See MPEP § 2173.05(d).
Claim Objections
Claims 24 and 28 are objected to because of the following informalities:
“on a mobile device” on line 11 of claim 24 should be corrected as - - on the mobile device - -
“on a mobile device” on line 12 of claim 28 should be corrected as - - on the mobile device - -
Appropriate correction is required.
Specification
The amend March 07, 2015; March 17, 2017; and March 02, 2020 and all subsequent amended Specification are objected to under 35 U.S.C. 132(a) because it introduces new matter into the disclosure. 35 U.S.C. 132(a) states that no amendment shall introduce new matter into the disclosure of the invention. The added material which is not supported by the original disclosure is as follows:
On March 07, 2015, the Applicant firstly amended Specification by adding the phrase “SLCode can be concealed”, and “concealed” to paragraphs 0029, 0034, 0037, and 0042 of the Specification.
On March 17, 2017, the Applicant amended Specification by adding the SLCode (“SmartLabelCode”), such as Quick Response Code and Near-Field Communication Tag.
On March 20, 2020, the Applicant then amended Specification the concept of a “NFC tag” being “concealed”. It is further noted that all subsequent amendments to Specification after March 20, 2020 still contained new matters as discussed above.
While the original Specification dated November 10, 2014 disclosed the “SL Code”; however, the Specification did not describe either implicitly and/or explicitly that the “SL Code” being concealed code or the “NFC tag”.
Furthermore, while Figure 1 illustrates an item # 1 being the SL code, and Figure 2 illustrates the SL Code; however, these figures failed to clearly illustrate and/or describe in anyway that these SLCode are the NFC tag, and being concealed.
Therefore, the Applicant is required to cancel the new matter in the reply to this Office Action.
Claim Rejections - 35 USC § 103
The following is a quotation of 35 U.S.C. 103 which forms the basis for all obviousness rejections set forth in this Office action:
A patent for a claimed invention may not be obtained, notwithstanding that the claimed invention is not identically disclosed as set forth in section 102, if the differences between the claimed invention and the prior art are such that the claimed invention as a whole would have been obvious before the effective filing date of the claimed invention to a person having ordinary skill in the art to which the claimed invention pertains. Patentability shall not be negated by the manner in which the invention was made.
Claim 24-37 is/are rejected under 35 U.S.C. 103 as being unpatentable over Mu et al. (hereinafter “Mu”, US 2009/0108057) in view of “How I started My Business” Stickybits.com” by The Daily Beast dated March 16, 2011 (www.youtube.com/watch?v=khB70OUZ5tA) (hereinafter “Reference A”).
Regarding claim 24, Mu discloses a customer apparatus (i.e., a mobile device 10 or 210 as shown in Figs. 1 & 3) for facilitating unique digital content creation and delivery from a product provider artifact carrying a unique identification (i.e., a Quick Response (QR) code from a physical object 40 as shown in Fig. 1), comprising:
a mobile device (i.e., the mobile device 10 or 210 includes a camera application 30 for scanning the QR code from a physical object 40 as shown in Figs. 1 & 3, and as described in paragraphs 0021, and 0023), the mobile device comprising at least one mobile device processor operatively (i.e., a processor as described in paragraph 0068) connected to at least one cloud digital content management system (i.e., a server 120 or 240 as shown in Figs. 2 & 3, and as described in paragraph 0022) via a mobile telecommunication network (i.e., a mobile infrastructure and/or a wireless network 130 as shown in Fig. 2, and as described in paragraph 0022), wherein the at least one mobile device processor is configured to:
read the unique identification (i.e., the mobile device 210 scans the QR code 205, and causes the QR code 205 to be transferred to the server 120 or 240 as shown in Figs. 2 & 3. Also, see descriptions in paragraphs 0028-0030);
obtain the digital content associated to a unique identification from the at least one cloud digital content management system (i.e., the server 240 sends text, graphics and multimedia data of the file 250, which is “digital content” of claim language, directly to the mobile device 210 as described in paragraphs 0027, and 0029. In addition, an object audio or video corresponds to the transmitted & scanned QR code is retrieved as shown in Fig. 5 and as described in paragraph 0036); and
directly show the digital content obtained on the mobile device from the at least one cloud digital content management system via the mobile telecommunication network based on the unique identification (i.e., the text, graphics and multimedia data of the file 250 transmitted directly from the server 240 to the mobile device 210 as shown in Fig. 3, and as described in paragraph 0029. The multimedia object is transferred to the mobile device 210 for playback as described in Abstract. Also, the audio and video retrieved is delivered to the mobile device for presentation as shown in the last step of Fig. 5, and as described in paragraph 0036).
Mu, however, does not expressly disclose:
read the unique identification stored by the product provider artifact; and
create digital content and associating the digital content to the unique identification.
In a similar endeavor, Reference A discloses:
read the unique identification stored by the product provider artifact (i.e., scanning the unique barcode to retrieve a video the user posted earlier as described in timestamp 0:57-1:07); and
create digital content and associating the digital content to the unique identification (i.e., scanning a barcode and posting something digital to that same barcode as described in timestamp 0:28, 0:31, 0:33, and 1:00-1:07).
Therefore, it would have been obvious to one of ordinary skilled in the art to modify the teachings of the cited references, and arrive at the present invention.
The motivation/suggestion for doing so would have been to enable the user to identify and/or retrieve contents by using barcodes.
Regarding claim 25, Mu and Reference A disclose all limitations recited within claims as described above. Mu also discloses wherein the at least one mobile device processor is configured for reading visible unique identification encoded such as in QR Code and/or concealed such as in NFC tags, on the product provider artifact for showing of the unique digital content (i.e., a user of the mobile device scans the QR codes of an object, and a selected multimedia object corresponding to the QR code is retrieved from the database as described in Abstract). Reference A further discloses reading the unique identification such as in QR Code on the product provider artifact (i.e., reading the bar code as shown in timestamps 0:57-1:07) for direct recording of unique digital content (i.e., scanning a bar code and posting something digital to that same bar code as shown in timestamps 0:28, 0:31-0:33, and 1:00-1:07).
Regarding claim 26, Mu and Reference A disclose all limitations recited within claims as described above. Reference A also discloses wherein the at least one mobile device processor is configured to read the product provider artifact unique identification (i.e., a user of the mobile device scans the barcode of an object as described in timestamp 0:28) and enable the creation of the unique digital content associated with the unique identification (i.e., the user scans the barcode and posts a digital content corresponding to this scanned barcode as described in timestamp 0:31-0:33).
Regarding claim 27, Mu and Reference A disclose all limitations recited within claims as described above. Mu also discloses wherein said cloud digital content management is for processing mobile application transactions over the mobile telecommunication network (i.e., the server 240 receives the transmitted QR code from the mobile device 210 over the mobile infrastructure as shown in Fig. 3);
for the administration, generation and storage of the unique digital content and the unique identification key associated with the product provider artifact (i.e., the server 120 or 240 stores audio visual object associated with the QR code as described in paragraphs 0017-0018, and 0036).
Regarding claim 28, Mu discloses a method for facilitating unique digital content creation and unique digital content delivery using a product provider artifact carrying a unique identification, comprising:
a mobile device (i.e., the mobile device 10 or 210 includes a camera application 30 for scanning the QR code from a physical object 40 as shown in Figs. 1 & 3, and as described in paragraphs 0021, and 0023), connected to at least one cloud digital content management system (i.e., a server 120 or 240 as shown in Figs. 2 & 3, and as described in paragraph 0022) via a mobile telecommunication network (i.e., a mobile infrastructure and/or a wireless network 130 as shown in Fig. 2, and as described in paragraph 0022), capable of:
reading the unique identification (i.e., the mobile device 210 scans the QR code 205, and causes the QR code 205 to be transferred to the server 120 or 240 as shown in Figs. 2 & 3. Also, see descriptions in paragraphs 0028-0030);
associating the digital content to the unique identification, and directly storing digital content to the at least one cloud digital content management (i.e., the server 120 or 240 stores audio visual object associated with the QR code as described in paragraphs 0017-0018, and 0036)
obtaining the digital content from the at least one cloud digital content management system upon the reading of the unique identification (i.e., the server 240 sends text, graphics and multimedia data of the file 250, which is “digital content” of claim language, directly to the mobile device 210 as described in paragraphs 0027, and 0029. In addition, an object audio or video corresponds to the transmitted & scanned QR code is retrieved as shown in Fig. 5 and as described in paragraph 0036); and
directly showing the unique digital content obtained from the at least one cloud digital content management system via the mobile telecommunication network on the mobile device upon the reading of the unique identification (i.e., the text, graphics and multimedia data of the file 250 transmitted directly from the server 240 to the mobile device 210 as shown in Fig. 3, and as described in paragraph 0029. The multimedia object is transferred to the mobile device 210 for playback as described in Abstract. Also, the audio and video retrieved is delivered to the mobile device for presentation as shown in the last step of Fig. 5, and as described in paragraph 0036).
Mu, however, does not expressly disclose:
reading the unique identification stored by the product provider artifact; and
creating the unique digital content, associating the digital content with the unique identification.
In a similar endeavor, Reference A discloses:
reading the unique identification stored by the product provider artifact (i.e., scanning the unique barcode to retrieve a video the user posted earlier as described in timestamp 0:57-1:07); and
creating the unique digital content, associating digital content with a unique identification (i.e., scanning a barcode and posting something to that same barcode as described in timestamp 0:28, 0:31, and 0:33).
Therefore, it would have been obvious to one of ordinary skilled in the art to modify the teachings of the cited references, and arrive at the present invention.
The motivation/suggestion for doing so would have been to enable the user to identify and/or retrieve contents by using barcodes.
Regarding claim 29, Mu and Reference A disclose all limitations recited within claims as described above. Mu also discloses wherein the at least one mobile device processor is configured for reading encoded unique identification visible as in QR Code and/or concealed as in NFC tags on the product provider artifact for the direct showing of unique digital content (i.e., a user of the mobile device scans the QR codes of an object, and a selected multimedia object corresponding to the QR code is retrieved from the database as described in Abstract).
Regarding claim 30, Mu and Reference A disclose all limitations recited within claims as described above. Reference A also discloses wherein the mobile device reads the product provider artifact (i.e., a user of the mobile device scans the barcode of an object as described in timestamp 0:28) and enables the creation of digital content associated with the unique identification (i.e., the user scans the barcode and posts a digital content corresponding to this scanned barcode as described in timestamp 0:31-0:33).
Regarding claim 31, Mu and Reference A disclose all limitations recited within claims as described above. Mu also discloses wherein said cloud digital content management system is for processing mobile application transactions over the mobile telecommunication network (i.e., the server 240 receives the transmitted QR code from the mobile device 210 over the mobile infrastructure as shown in Fig. 3); and
for the administration, generation and storage of the digital content and the unique identification data associated with the product provider artifact (i.e., the server 120 or 240 stores audio visual object associated with the QR code as described in paragraphs 0017-0018, and 0036).
Regarding claim 32, Mu and Reference A disclose all limitations recited within claims as described above. Reference A also discloses wherein the mobile device reads the product provider artifact unique identification and enable the showing of unique digital content associated with the unique identification (i.e., the user scans the barcode on the sticker as described in timestamp at 0:57-1:00) and enable the retrieval of digital content associated with the unique identification (i.e., the video posted earlier is played in response to the scanned of the barcode as described in timestamp 1:00-1:07).
Regarding claim 33, Mu and Reference A disclose all limitations recited within claims as described above. Reference A also discloses wherein the mobile device is for reading the product provider artifact unique identification (i.e., the user scans the barcode on the sticker as described in timestamp at 0:57-1:00) and enables the showing of unique digital content associated with the unique identification (i.e., the video posted earlier is played in response to the scanned of the barcode as described in timestamp 1:00-1:07).
Regarding claim 34, Mu and Reference A disclose all limitations recited within claims as described above. Reference A also discloses wherein the product provider artifact stores concealed unique identification for the creation and the showing of unique digital content (i.e., scanning a barcode and posting something digital to that same barcode as shown in timestamp 0:28, 0:31, 0:33 and 1:00-1:07). Mu on the other hand also discloses the product provider artifact has a memory for storing the unique identification (i.e., a memory for storing as described in paragraphs 0017-0018).
Regarding claim 35, Mu and Reference A disclose all limitations recited within claims as described above. Mu also discloses wherein the product provider artifact has a memory for storing concealed unique identification (i.e., a memory for storing as described in paragraphs 0017-0018).
Regarding claim 36, Mu and Reference A disclose all limitations recited within claims as described above. Reference A also discloses wherein the product provider artifact can carry unique identification codes for the direct recording and showing of unique digital content (i.e., scanning a barcode and posting something digital to that same barcode as shown in timestamp 0:28, 0:31, 0:33 and 1:00-1:07).
Regarding claim 37, Mu and Reference A disclose all limitations recited within claims as described above. Reference A also discloses wherein the mobile device can read unique identification codes on product provider artifact for the direct recording and showing of unique digital contents (i.e., scanning a barcode and posting something digital to that same barcode as shown in timestamp 0:28, 0:31, 0:33 and 1:00-1:07).
Conclusion
THIS ACTION IS MADE FINAL. Applicant is reminded of the extension of time policy as set forth in 37 CFR 1.136(a).
A shortened statutory period for reply to this final action is set to expire THREE MONTHS from the mailing date of this action. In the event a first reply is filed within TWO MONTHS of the mailing date of this final action and the advisory action is not mailed until after the end of the THREE-MONTH shortened statutory period, then the shortened statutory period will expire on the date the advisory action is mailed, and any nonprovisional extension fee (37 CFR 1.17(a)) pursuant to 37 CFR 1.136(a) will be calculated from the mailing date of the advisory action. In no event, however, will the statutory period for reply expire later than SIX MONTHS from the mailing date of this final action.
Any inquiry concerning this communication or earlier communications from the examiner should be directed to WAYNE CAI whose telephone number is (571)272-7798. The examiner can normally be reached Monday-Thursday, 7:00 AM-5:00 PM.
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/Wayne H Cai/Primary Examiner, Art Unit 2644