DETAILED ACTION
Continued Examination Under 37 CFR 1.114
A request for continued examination under 37 CFR 1.114, including the fee set forth in 37 CFR 1.17(e), was filed in this application after final rejection. Since this application is eligible for continued examination under 37 CFR 1.114, and the fee set forth in 37 CFR 1.17(e) has been timely paid, the finality of the previous Office action has been withdrawn pursuant to 37 CFR 1.114. Applicant's submission filed on 05/07/2025 has been entered.
Response to Arguments
On page 2 of the Remarks, Applicant acknowledges the provisional double patenting rejection and correctly indicates the current pending claims may change during prosecution. Examiner leaves the double patenting rejection in the Office Action for posterity, but agrees no further action is required at this time.
On pages 2–3 of the Remarks, Applicant contends Forutanpour and Silva are deficient for failing to teach or suggest amended features of claim 1. Examiner finds the arguments moot in view of the new grounds of rejection necessitated by amendment. Specifically, the rejection now additionally relies on the teachings of Makhdumi to teach or suggest generating an authentication code in a random location on a display. See rejection, infra.
On pages 2–3 of the Remarks, Applicant contends Forutanpour and Silva are deficient because an IMEI number is static and assigned to a given phone and would not change. While Examiner agrees with Applicant’s arguments regarding IMEI numbers, Examiner disagrees that Forutanpour is limited to teaching IMEI numbers as codes. Indeed, Forutanpour’s teachings are drawn to printed or displayed patterns, codes, and/or text and the reading or interpreting of those patterns, codes, and/or text to generate or recognize an identifier of the device. Forutanpour’s teaching, combined with Silva’s teachings regarding a kiosk capable of printing a unique code for the user to affix to the device for tracking purposes, teaches or suggests to the skilled artisan a random code on a surface of the test object in the manner claimed. See rejection, infra. See also plethora of prior art references cited under the Conclusion Section of this Office Action evidencing that randomly generated, unique codes for identification and authentication are well-understood and possessed by one of ordinary skill. Therefore, for all the foregoing reasons, Applicant’s arguments are unpersuasive of patentability under 35 U.S.C. 103.
Other claims are not argued separately. Remarks, 3.
Double Patenting
The nonstatutory double patenting rejection is based on a judicially created doctrine grounded in public policy (a policy reflected in the statute) so as to prevent the unjustified or improper timewise extension of the “right to exclude” granted by a patent and to prevent possible harassment by multiple assignees. A nonstatutory double patenting rejection is appropriate where the conflicting claims are not identical, but at least one examined application claim is not patentably distinct from the reference claim(s) because the examined application claim is either anticipated by, or would have been obvious over, the reference claim(s). See, e.g., In re Berg, 140 F.3d 1428, 46 USPQ2d 1226 (Fed. Cir. 1998); In re Goodman, 11 F.3d 1046, 29 USPQ2d 2010 (Fed. Cir. 1993); In re Longi, 759 F.2d 887, 225 USPQ 645 (Fed. Cir. 1985); In re Van Ornum, 686 F.2d 937, 214 USPQ 761 (CCPA 1982); In re Vogel, 422 F.2d 438, 164 USPQ 619 (CCPA 1970); In re Thorington, 418 F.2d 528, 163 USPQ 644 (CCPA 1969).
A timely filed terminal disclaimer in compliance with 37 CFR 1.321(c) or 1.321(d) may be used to overcome an actual or provisional rejection based on nonstatutory double patenting provided the reference application or patent either is shown to be commonly owned with the examined application, or claims an invention made as a result of activities undertaken within the scope of a joint research agreement. See MPEP § 717.02 for applications subject to examination under the first inventor to file provisions of the AIA as explained in MPEP § 2159. See MPEP § 2146 et seq. for applications not subject to examination under the first inventor to file provisions of the AIA . A terminal disclaimer must be signed in compliance with 37 CFR 1.321(b).
The filing of a terminal disclaimer by itself is not a complete reply to a nonstatutory double patenting (NSDP) rejection. A complete reply requires that the terminal disclaimer be accompanied by a reply requesting reconsideration of the prior Office action. Even where the NSDP rejection is provisional the reply must be complete. See MPEP § 804, subsection I.B.1. For a reply to a non-final Office action, see 37 CFR 1.111(a). For a reply to final Office action, see 37 CFR 1.113(c). A request for reconsideration while not provided for in 37 CFR 1.113(c) may be filed after final for consideration. See MPEP §§ 706.07(e) and 714.13.
The USPTO Internet website contains terminal disclaimer forms which may be used. Please visit www.uspto.gov/patent/patents-forms. The actual filing date of the application in which the form is filed determines what form (e.g., PTO/SB/25, PTO/SB/26, PTO/AIA /25, or PTO/AIA /26) should be used. A web-based eTerminal Disclaimer may be filled out completely online using web-screens. An eTerminal Disclaimer that meets all requirements is auto-processed and approved immediately upon submission. For more information about eTerminal Disclaimers, refer to www.uspto.gov/patents/apply/applying-online/eterminal-disclaimer.
Claims 1–20 are provisionally rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1–20 of copending Application No. 17/028,239 (reference application). Although the claims at issue are not identical, they are not patentably distinct from each other because their subject matter represents substantial overlap.
This is a provisional nonstatutory double patenting rejection because the patentably indistinct claims have not in fact been patented.
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 of this title, 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.
Claims 1, 3–6, 8–10, 12–15, and 17–19 are rejected under 35 U.S.C. 103 as being unpatentable over Silva (US 2020/0265487 A1), Forutanpour (US 2022/0051507 A1), and Makhdumi (US 2015/0248664 A1).
Examiner notes it was well-established by industry in standardization documents prior to Applicant’s effective filing date how to evaluate and classify cosmetic damage to mobile devices. Examiner finds Applicant’s purported invention is nothing more than replacing the human operator and decision maker with an automated, machine evaluator using conventional technology known at the time.
Regarding claim 1, the combination of Silva, Forutanpour, and Makhdumi teaches or suggests a method, comprising: receiving, by a processor, a plurality of images of a test object, the plurality of images including a plurality of surfaces of the test object (Forutanpour, ¶¶ 0028 and 0047: teaches multiple camera angle images of a device for purchase in a kiosk implementation the images are used to inspect the device for damage; Examiner notes replacing human inspection with machine inspection likely runs afoul of the abstract idea prohibition on patenting such subject matter; Forutanpour, Abstract: teaches a kiosk having a processor that causes an imaging device to capture images of a device under inspection; see also Forutanpour, ¶ 0034–0036: describing cameras, mirrors, and other such tools to “visually evaluate the mobile phone from multiple perspectives”; Forutanpour, ¶ 0067: teaches the cameras of the evaluation kiosk can evaluate the front, back, and sides of the mobile device), wherein one of the plurality of surfaces of the test object comprises a random code, wherein the random code is generated at a time of generating the plurality of images of the test object; wherein the random code is different every time the test object is imaged (Forutanpour, ¶ 0028: teaching OCR on a displayed code on the display of the device; Silva, ¶ 0041: teaches the kiosk can print a unique code for the user to affix to the device for tracking purposes, the tracking obviously including taking an image of the barcode; See also plethora of prior art references cited under the Conclusion Section of this Office Action evidencing that randomly generated, unique QR codes for kiosk transactions were possessed by one of ordinary skill prior to Applicant’s priority date); wherein a location of the random code is randomized every time the test object is imaged (Makhdumi, ¶ 0030: teaches displaying a security code, for example a QR code, at random positions; See also plethora of prior art references cited under the Conclusion Section of this Office Action evidencing that security codes generated and displayed at random positions on a display were possessed by one of ordinary skill prior to Applicant’s priority date); receiving, by the processor, an image of a barcode on the test object (Forutanpour, ¶ 0028: teaching OCR on a displayed code on the display of the device; Silva, ¶ 0041: teaches the kiosk can print a unique code for the user to affix to the device for tracking purposes, the tracking obviously including taking an image of the barcode); receiving, by the processor, the random code (Forutanpour, ¶ 0028: teaching OCR on a displayed code on the display of the device; Silva, ¶ 0041: teaches the kiosk can print a unique code for the user to affix to the device for tracking purposes, the tracking obviously including taking an image of the barcode; Forutanpour, ¶ 0047: teaches, in a vending kiosk implementation for mobile phones, performing OCR on codes displayed by the device under inspection for purposes of comparison; Any comparison requires receiving the code for comparison); comparing, by the processor, the random code as received with the random code on the one of the plurality of surfaces of the test object (A human task now automated using generic computing; Codes are issued for comparing, there is no other purpose of codes; Forutanpour, ¶ 0047: teaches, in a vending kiosk implementation for mobile phones, performing OCR on codes displayed by the device under inspection for purposes of comparison; Any comparison requires receiving the code for comparison; Forutanpour, ¶ 0065: teaches a server can perform essentially any task described in Forutanpour including database management for visual query tasks, which is how a system performs visual inspection of a device using a comparison to cached images of how the device is supposed to look); storing a result of the comparing the random code as received with the random code on the one of the plurality of surfaces of the test object (In computing, there is no utility to the computation if the result is not stored; Furthermore, any comparison computation stores a result of the comparison, otherwise it is not, by definition, a “comparison”; Forutanpour, ¶ 0047: teaches, in a vending kiosk implementation for mobile phones, performing OCR on codes displayed by the device under inspection for purposes of comparison; Any comparison requires receiving the code for comparison); removing, by the processor; the random code on the one of the plurality of surfaces from the plurality of images of the test object to generate a plurality of modified images of the test object (Isolating the device from the displayed code since the code will obviously not match the template of the undamaged device for comparison; In other words, it would be obvious that you would not want the barcode or displayed code to be in the image being compared to the template image or you would universally get an indication of a damaged area of the phone since the two images would not match in that specified region; Forutanpour, ¶ 0028: teaches a visual inspection and recognition kiosk for automated grading of cell phones turned in to the kiosk wherein cameras are used to take images of the various surfaces of the mobile device and a comparison of those images to images of an undamaged device is used to grade the device’s cosmetic wear; However, Forutanpour does not specifically in as much detail describe how or why the isolation is performed in the manner described by Silva; Silva, ¶ 0053: explains, in an automated cosmetic damage recognition application, image pre-processing is an obvious first step so that features not amenable to the desired comparison can be “cropped” out or otherwise removed); selecting, by the processor, a region of interest in each of the modified plurality of images of the test object, the region of interest comprising the test object having a background removed (Isolating the device from the background is often called “image/object segmentation”; Isolating the device from the background since the background will obviously not match the template of the undamaged device for comparison is obvious; In other words, it would be obvious that you would not want the background in the image being compared to the template image or you would universally get an indication of a damaged (mismatched) area of the phone since the two images would not match in that specified region; Forutanpour, ¶ 0028: teaches a visual inspection and recognition kiosk for automated grading of cell phones turned in to the kiosk wherein cameras are used to take images of the various surfaces of the mobile device and a comparison of those images to images of an undamaged device is used to grade the device’s cosmetic wear; However, Forutanpour does not specifically in as much detail how or why the isolation is performed in the manner described by Silva; Silva, ¶ 0053: explains, in an automated cosmetic damage recognition application, image pre-processing is an obvious first step so that features not amenable to the desired comparison can be “cropped” out or otherwise removed; see also Silva, ¶ 0023: explaining that automated systems can remove from evaluation background images); for the plurality of regions of interest as selected, comparing, by the processor, each region of interest with a corresponding profile image and identifying defects in each region of interest (Forutanpour, ¶ 0028: teaches visual analysis for damage by a mobile device kiosk wherein images of the device under inspection are compared to images of a same make and model in an undamaged state; Forutanpour, ¶ 0065: teaches a server can perform essentially any task described in Forutanpour including database management for visual query tasks, which is how a system performs visual inspection of a device using a comparison to cached images of how the device is supposed to look; Silva, ¶ 0041: teaches digital comparison of images of the device under inspection), wherein the corresponding profile image is determined from the image barcode on the test object (Silva, ¶ 0041: teaches determining the make and model of the phone visually; Forutanpour, ¶ 0021: teaches use of a QR code or barcode for identifying a device; see also Forutanpour, ¶ 0028: describes OCR for reading a device identifier such as a displayed pattern or code); grading, by the processor, a cosmetic appearance of each region of interest based on the identified defects (Forutanpour, ¶ 0067: teaches the manual human-centric process of “grad[ing] the physical condition of the device” can be performed by the kiosk, in an automated fashion, instead by human; Silva, ¶ 0024: teaches the system “perform[s] cosmetic condition evaluation based on images of electronic devices”); storing the grades of the cosmetic appearance for each region of interest (All tasked performed by a computing device are “stored,” otherwise there is no utility; Silva, ¶ 0024: teaches the system “perform[s] cosmetic condition evaluation based on images of electronic devices”); sending the grades of the cosmetic appearance for each region of interest to a remote device (Forutanpour, ¶ 0065: teaches a server can perform essentially any task described in Forutanpour including database management for visual query tasks, which is how a system performs visual inspection of a device using a comparison to cached images of how the device is supposed to look; Forutanpour, ¶ 0067: teaches the manual human-centric process of “grad[ing] the physical condition of the device” can be performed by the kiosk, in an automated fashion, instead of by human; Silva, ¶ 0024: teaches the system “perform[s] cosmetic condition evaluation based on images of electronic devices”); and sending the result of the comparing the random code as received with the random code on the one of a plurality of surfaces of the test object (Forutanpour, ¶ 0065: teaches a server can perform essentially any task described in Forutanpour including database management for visual query tasks).
One of ordinary skill in the art, before the effective filing date of the claimed invention, would have been motivated to combine the elements taught by Forutanpour, with those of Silva, because both references are drawn to the same field of endeavor, because both references are assigned to the same entity and have overlapping authorship, because the skilled artisan would have already understood that Forutanpour’s image evaluation of damage on a mobile device would have necessarily included using generic image processing techniques such as image segmentation and other image pre-processing steps as described in Silva, and because Applicant’s claimed invention is nothing more than a mere combination of prior art elements, according to known methods, to yield a predictable result. This rationale applies to all combinations of Silva and Forutanpour used in this Office Action unless otherwise noted.
One of ordinary skill in the art, before the effective filing date of the claimed invention, would have been motivated to combine the elements taught by Forutanpour and Silva, with those of Makhdumi, because all three references are drawn to the same field of endeavor and because, as Makhdumi evidences, the skilled artisan would have already understood that random authentication codes could advantageously be displayed in random positions to enhance security. Therefore, the combination is a mere combination of prior art elements, according to known methods, to yield a predictable result. This rationale applies to all combinations of Silva, Forutanpour, and Makhdumi used in this Office Action unless otherwise noted.
Regarding claim 3, the combination of Silva, Forutanpour, and Makhdumi teaches or suggests the method of claim 1, wherein the plurality of images of the test object are received from a remote device, wherein the remote device comprises a camera configured to capture the plurality of images (Forutanpour, ¶ 0065: teaches a server can perform essentially any task described in Forutanpour including database management for visual query tasks, which is how a system performs visual inspection of a device using a comparison to cached images of how the device is supposed to look;).
Regarding claim 4, the combination of Silva, Forutanpour, and Makhdumi teaches or suggests the method of claim 3, wherein the remote device is a cosmetic inspection device (Forutanpour, Abstract: indicates the system is a device for cosmetic inspection of mobile devices).
Regarding claim 5, the combination of Silva, Forutanpour, and Makhdumi teaches or suggests the method of claim 3, wherein the remote device is a mobile device (Silva, ¶ 0073–0078: teaches the disclosed techniques can be performed on client devices and that the only hardware requirements are processors, memory, a camera, appropriate software, and a communication link such as a wireless communication link, all of which we know can be found on a mobile device; Examiner notes the disclosed kiosk is also “mobile”; How else did it get there?).
Regarding claim 6, the combination of Silva, Forutanpour, and Makhdumi teaches or suggests the method of claim 1, wherein the barcode is a QR code (Forutanpour, ¶ 0021: teaches use of a QR code for identifying a device).
Regarding claim 8, the combination of Silva, Forutanpour, and Makhdumi teaches or suggests the method of claim 1, wherein the test object is a mobile device; comprising determining a value of the mobile device based on the grades of the cosmetic appearance for each region of interest (Forutanpour, ¶ 0054: teaches that a value is determined to offer to the customer based on the condition of the phone; see also Forutanpour, ¶ 0053: teaching a quote is provided to the user).
Regarding claim 9, the combination of Silva, Forutanpour, and Makhdumi teaches or suggests the method of claim 1, wherein the test object is a mobile device; wherein the random code is displayed on a display of the mobile device (Forutanpour, ¶ 0028: teaches displayed codes can be subjected to OCR for determining or identifying the device under inspection; see also Forutanpour, ¶ 0053: teaching a unique (i.e., random) code can be provided to the user to display on the device so that the inspection device can accurately recognize and track that the same phone is being evaluated in the kiosk and turned in for value).
Claim 10 lists the same elements as claim 1, but is drawn to an apparatus rather than a method. Therefore, the rationale for the rejection of claim 1 applies to the instant claim.
Claim 12 lists the same elements as claim 3, but is drawn to an apparatus rather than a method. Therefore, the rationale for the rejection of claim 3 applies to the instant claim.
Claim 13 lists the same elements as claim 4, but is drawn to an apparatus rather than a method. Therefore, the rationale for the rejection of claim 4 applies to the instant claim.
Claim 14 lists the same elements as claim 5, but is drawn to an apparatus rather than a method. Therefore, the rationale for the rejection of claim 5 applies to the instant claim.
Claim 15 lists the same elements as claim 6, but is drawn to an apparatus rather than a method. Therefore, the rationale for the rejection of claim 6 applies to the instant claim.
Claim 17 lists the same elements as claim 8, but is drawn to an apparatus rather than a method. Therefore, the rationale for the rejection of claim 8 applies to the instant claim.
Claim 18 lists the same elements as claim 9, but is drawn to an apparatus rather than a method. Therefore, the rationale for the rejection of claim 9 applies to the instant claim.
Claim 19 lists the same elements as claim 1, but is drawn to a CRM rather than a method. Therefore, the rationale for the rejection of claim 1 applies to the instant claim.
Claims 7 and 16 are rejected under 35 U.S.C. 103 as being unpatentable over Silva, Forutanpour, Makhdumi, and Hu (US 2020/0226731 A1).
Regarding claim 7, the combination of Silva, Forutanpour, Makhdumi, and Hu teaches or suggests the method of claim 1, comprising aligning the plurality of images with the corresponding profile images (Examiner notes image alignment can include geometric transformations or image rectification or scale invariant feature transform (SIFT) algorithms and that such a technique is ubiquitous in image recognition systems so that two images can be compared for similarity; Silva, ¶ 0063: explains that images in the training set should be mirrored, rotated, etc. so that a robust set of classification template images can be used against the particular orientation of the imaged device under inspection; Silva does not explicitly teach what Hu’s claim 4 teaches, which is, that the device image and the template image are advantageously aligned when attempting to identify a defect in a product; see also Hu, ¶¶ 0026–0027: teaching known solutions such as template matching and key point matching, wherein key point matching aligns images and only takes 1 to 2 seconds).
One of ordinary skill in the art, before the effective filing date of the claimed invention, would have been motivated to combine the elements taught by Forutanpour, Silva, and Makhdumi, with those of Hu, because Forutanpour, Silva, and Hu are all drawn to detecting defects in products using image analysis, because, as Silva hints at and Hu specifically teaches, it is important in image comparison against a template image to align the image of the device and the template image prior to algorithmic comparison and because Applicant’s claimed invention is nothing more than a mere combination of prior art elements, according to known methods, to yield a predictable result. This rationale applies to all combinations of Silva, Forutanpour, Makhdumi, and Hu used in this Office Action unless otherwise noted.
Claim 16 lists the same elements as claim 7, but is drawn to an apparatus rather than a method. Therefore, the rationale for the rejection of claim 7 applies to the instant claim.
Conclusion
The prior art made of record and not relied upon is considered pertinent to applicant's disclosure.
Forutanpour (US 2022/0114854 A1) teaches much of what Forutanpour ‘507 teaches.
Waldron (US 2022/0172583 A1) teaches codes can be displayed on-screen or by printed code (e.g. on a sticker) or that a code can be obstructed by placing a second code over a first code (¶ 0022).
Chaturvedi (US 2018/0285843 A1) teaches randomized codes, including random QR codes, generated and displayed on an electronic device and read by a kiosk to identify or authenticate the device displaying the random code (¶¶ 0039 and 0045).
Ramadhane (US 2023/0116384 A1) teaches generating a new, random code each time a request is made (¶ 0004).
Patel (US 2020/0160338 A1) teaches an authorization code that is unique and randomly generated that expires after a period of time (¶ 0242).
Strober (US 2017/0351757 A1) teaches a synchronization code that is randomly generated each time there is a connection to a server (¶ 0031).
Curry (US 2017/0337507 A1) teaches authentication codes can be randomly generated and change each time a user authenticates such that a same number cannot be used twice in a row (¶ 0040).
Zheng (US 2014/0173713 A1) teaches displaying a verification code on a touchscreen using a random position (e.g. ¶ 0014).
Beshke (US 2011/0090097 A1) teaches a random code generator capable of providing codes represented by numbers, letters, colors, pictures, symbols, etc. and capable of randomizing their location on the display (¶ 0020).
Oumalek (US 2015/0120566 A1) teaches security codes should be displayed in random locations and for only a short time (¶ 0021).
Buchner (US 2017/0046704 A1) teaches random code location once per authentication event (¶ 0049).
Any inquiry concerning this communication or earlier communications from the examiner should be directed to Michael J Hess whose telephone number is (571)270-7933. The examiner can normally be reached on Mon - Fri 9:00am-5:30pm.
If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, William Vaughn can be reached on (571)272-3922. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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MICHAEL J. HESS
Primary Examiner
Art Unit 2481
/MICHAEL J HESS/Primary Examiner, Art Unit 2481