DETAILED ACTION
Summary
This Office Action is responsive to Applicant submission filed 10/30/2025.
Claims 14, 17, and 35 have been canceled. Claims 1-13, 15-16, 18-34, and 36-37 are currently pending.
Response to Arguments
Applicant's arguments filed 10/30/2025 have been fully considered but they are not persuasive.
In response to applicant's argument based upon the age of the references, contentions that the reference patents are old are not impressive absent a showing that the art tried and failed to solve the same problem notwithstanding its presumed knowledge of the references. See In re Wright, 569 F.2d 1124, 193 USPQ 332 (CCPA 1977).
In response to applicant's argument that DE LUCA and VAN MEGCHELEN is nonanalogous art, it has been held that a prior art reference must either be in the field of the inventor’s endeavor or, if not, then be reasonably pertinent to the particular problem with which the inventor was concerned, in order to be relied upon as a basis for rejection of the claimed invention. See In re Oetiker, 977 F.2d 1443, 24 USPQ2d 1443 (Fed. Cir. 1992). In this case, DE LUCA was introduced as a teaching reference for a very small aspect of the invention, specifically demonstrating dynamic HTML pages are a common form of HTML pages in the art. It would not be unreasonable for one of ordinary skill in the art to look to the teachings of DE LUCA given the primary reference, COULT, includes generation of HTML pages. Further, while VAN MEGCHELEN is not directed to digital patent marking for associating patents with physical products, the establishment of associations between information for view on a web page discussed in VAN MEGCHELEN is still pertinent to the particular problem with which the inventor was concerned.
In response to applicant's argument that the examiner's conclusion of obviousness is based upon improper hindsight reasoning, it must be recognized that any judgment on obviousness is in a sense necessarily a reconstruction based upon hindsight reasoning. But so long as it takes into account only knowledge which was within the level of ordinary skill at the time the claimed invention was made, and does not include knowledge gleaned only from the applicant's disclosure, such a reconstruction is proper. See In re McLaughlin, 443 F.2d 1392, 170 USPQ 209 (CCPA 1971).
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(s) 1-4, 6, 7, 9, 12, 14-24, 26, 27, 29, 30, 32-35, and 37 is/are rejected under 35 U.S.C. 103 as being unpatentable over COULT, US 2002/0035571 in view of STADING et al, US 2014/0289675, VAN MEGCHELEN, US 2012/0055984 and “Using the Wayback Machine to Archive (and Backup) WordPress”, https://wpmudev.com/blog/archiving-with-wayback-machine/.
Re claim 1:
COULT teaches a method actuated by an electronic processor accessible through a communication network, comprising the following steps:
Generating at least one product virtual entity with stored first information associated with said product virtual entity (i.e., product data in product database 26 [0039] [0058] [0061] [0063])
Generating at least one intellectual property rights virtual entity with stored second information associated with said intellectual property right virtual entity (i.e., patent data in patent database 24 [0039] [0058] [0061] [0145]);
Establishing an association between at least one intellectual property rights virtual entity and at least one product virtual entity and storing said established association (i.e., patent marking service 20 maps particular products with particular patents [0058] [0061])
Providing an alphanumeric string defining a URL type internet address and providing at least a part of said second information regarding the intellectual property rights virtual entities stored in association with the product virtual entity (i.e., a URL to the patent marking server enables retrieval of the patent data associated with a particular product).
COULT does not teach using a user interface to enter the first information and second information or generating a unique URL for each product virtual entity.
STADING teaches a method of mapping products to patents actuated by an electronic processor equipped with a user interface accessible through a communication network, comprising:
Generating at least one product virtual entity and entering, using said user interface, first information associated with said product virtual entity and storing said first information [0115] [0116] [0126] [Figures 11-14];
Generating at least one intellectual property rights virtual entity and entering, by means of said user interface, second information associated with said intellectual property rights virtual entity and storing said second information [0120] [0126] [Figures 13-14]; and
Establishing an association, by means of the user interface, between at least one intellectual property rights virtual entity and at least one product virtual entity and storing said established association [0094] [0128] [0136] [Figures 11-14].
VAN MEGCHELEN teaches a method comprising establishing an association between product information and process information and storing said establish association [0176]; generating an alphanumeric string defining a unique URL type internet address for each product virtual entity [0173] [0175] [0178] [Figures 2, 5, and 7]; and providing, as a result of an access to said URL type internet address, at least a part of the process virtual entities stored in association with the product virtual entity [0173] [0178] [Figure 7].
None of COULT, STADING, and VAN MEGCHELEN, teach storing, at a predetermined date and/or at predetermined events, in a remote archive, marked in terms of time, a graphical-information content relating to the at least a part of said second information regarding the intellectual property rights virtual entities stored in association with the product virtual entity and being visible as a result of the access to the URL internet address.
“Using the Wayback Machine to Archive (and Backup) WordPress” teaches archiving web pages through the use of the Wayback Machine, such that webpage graphical-information content is stored at predetermined dates/events and is marked in terms of time [pages 2-4].
It would have been obvious to one of ordinary skill in the art before the effective filing date to further incorporate the teachings of STADING in the method of COULT such that the method utilizes a user interface to input the product virtual entity information, intellectual property rights virtual entity information, and generation of the association. Such incorporation would be for the purpose of providing users with the ability to directly input and define product-patent mappings.
It would have further been obvious to one of ordinary skill in the art before the effective filing date to incorporate the teachings of VAN MEGCHELEN in the method of COULT, in view of STADING, such that the URL is a unique URL for each product virtual entity. Incorporating the generation of a unique URL for each product virtual entity would be for the purpose of providing individual product pages which include the product-patent mapped information. URLs to individual product pages have the advantage of taking users directly to information relevant to a specific product without needing to use a website directory.
It would have further been obvious to one of ordinary skill in the art before the effective filing date to further incorporate the teachings of “Using the Wayback Machine to Archive (and Backup) WordPress” in the method of COULT, in view of STADING and VAN MEGCHELEN, such that a graphical informative content is stored in a remote archive, marked in terms of time, at a predetermined date and/or at predetermined events. Such incorporation would be for the purpose of backing up the information presented on the webpage associated with the URL address, which advantageously enable users to recover and view webpage content in the even a website is broken.
Re claims 18-19:
COULT teaches a system comprising, in combination:
First software operating instruction configured to be executed by an electronic processor defining a process of:
Generating at least one product virtual entity with stored first information associated with said product virtual entity (i.e., product data in product database 26 [0039] [0058] [0061] [0063])
Generating at least one intellectual property rights virtual entity with stored second information associated with said intellectual property right virtual entity (i.e., patent data in patent database 24 [0039] [0058] [0061] [0145]);
An association operating module establishes an association between at least one intellectual property rights virtual entity and at least one product virtual entity and storing said established association (i.e., patent marking service 20 maps particular products with particular patents [0058] [0061])
Providing an alphanumeric string defining a URL type internet address and providing at least a part of said second information regarding the intellectual property rights virtual entities stored in association with the product virtual entity (i.e., a URL to the patent marking server enables retrieval of the patent data associated with a particular product).
COULT does not teach a graphical module for enter the first information and second information or generating a unique URL for each product virtual entity.
STADING teaches a system of mapping products to patents actuated by an electronic processor equipped with a user interface accessible through a communication network, comprising:
A graphical module for entering first information associated with a product virtual entity, configured to allow entry of said first information by a user [Figures 13-14];
A graphical module for insertion of second information associated with an intellectual property rights virtual entity, configured to allow entry of said second information by a user [Figures 13-14];
A graphical association module configured to allow a user to select at least one product virtual entity and at least one intellectual property rights virtual entity for purposes of their association; the first software operating instructions being also configured to make available: an operation module for generating a product virtual entity and storing said first information entered through said graphical module for entering first information; an operation module for generating a intellectual property rights virtual entity and storing said second information entered through said graphical module for entering second information in a database; a display module, for displaying at least a part of the second information relating to the intellectual property virtual entities associated with said product virtual entity [0094] [0120] [0128] [0136] [Figures 11-14].
VAN MEGCHELEN teaches a system comprising establishing an association between product information and process information and storing said establish association [0176]; generating an alphanumeric string defining a unique URL type internet address for each product virtual entity [0173] [0175] [0178] [Figures 2, 5, and 7]; and providing, as a result of an access to said URL type internet address, at least a part of the process virtual entities stored in association with the product virtual entity [0173] [0178] [Figure 7].
None of COULT, STADING, and VAN MEGCHELEN, teach storing, at a predetermined date and/or at predetermined events, in a remote archive, marked in terms of time, a graphical-information content relating to the at least a part of said second information regarding the intellectual property rights virtual entities stored in association with the product virtual entity and being visible as a result of the access to the URL internet address.
“Using the Wayback Machine to Archive (and Backup) WordPress” teaches archiving web pages through the use of the Wayback Machine, such that webpage graphical-information content is stored at predetermined dates/events and is marked in terms of time [pages 2-4].
It would have been obvious to one of ordinary skill in the art before the effective filing date to further incorporate the teachings of STADING in the system of COULT such that the method utilizes graphical modules to input the product virtual entity information, intellectual property rights virtual entity information, and generation of the association. Such incorporation would be for the purpose of providing users with the ability to directly input and define product-patent mappings.
It would have further been obvious to one of ordinary skill in the art before the effective filing date to incorporate the teachings of VAN MEGCHELEN in the system of COULT, in view of STADING, such that the URL is a unique URL for each product virtual entity. Incorporating the generation of a unique URL for each product virtual entity would be for the purpose of providing individual product pages which include the product-patent mapped information. URLs to individual product pages have the advantage of taking users directly to information relevant to a specific product without needing to use a website directory.
It would have further been obvious to one of ordinary skill in the art before the effective filing date to further incorporate the teachings of “Using the Wayback Machine to Archive (and Backup) WordPress” in the method of COULT, in view of STADING and VAN MEGCHELEN, such that a graphical informative content is stored in a remote archive, marked in terms of time, at a predetermined date and/or at predetermined events. Such incorporation would be for the purpose of backing up the information presented on the webpage associated with the URL address, which advantageously enable users to recover and view webpage content in the even a website is broken.
Re claims 2 and 20:
COULT, in view of STADING, VAN MEGCHELEN, and “Using the Wayback Machine to Archive (and Backup) WordPress”, teaches the method according to claim 1 and system according to claim 18, wherein VAN MEGCHELEN further teaches the step of generating an alphanumeric string defining said URL type internet address comprises the steps of: Preparing a first portion of alphanumeric string (47) shared by all product virtual entities; generating a second portion of unique alphanumeric string (48/49) for each product virtual entity; joining the second portion of string to the first portion of string, with said second portion of string positioned at a rear of the first portion of string, so as to make up the alphanumeric string of the URL type [0177] [Figure 7].
It would have been obvious to one of ordinary skill in the art before the effective filing date to incorporate teachings of VAN MEGCHELEN in the method and system of COULT, in view of STADING, for the reasons as enumerated above in claims 1 and 18.
Re claims 3-4 and 23-24:
COULT, in view of STADING, VAN MEGCHELEN, and “Using the Wayback Machine to Archive (and Backup) WordPress, teaches the method according to claim 1 and system of claim 18, comprising a step of generating, for each product virtual entity, an electronic file containing the second information relative to the intellectual property rights virtual entities associated with the product virtual entity and a step of storing said electronic file at a storage space accessible to said URL type internet address [0101]; the electronic file consists of an HTML page [0046] [0147] [0153].
Re claims 6 and 26:
COULT, in view of STADING, VAN MEGCHELEN, and “Using the Wayback Machine to Archive (and Backup) WordPress, teaches the method according to claim 1 and system of claim 18, wherein STADING further teaches the step of entering, using said user interface, first information associated with said product virtual entity comprises entering one or more of the following items of information:
An alphanumeric code defining a name of said product virtual entity; an alphanumeric code defining a product code associated with said product virtual entity; and image depicting said product virtual entity; a date defining the date of first marketing in a predetermined territory of a physical object of which said product virtual entity is representative [0026] [0122] [0123] [Figures 11-12].
It would have been obvious to one of ordinary skill in the art before the effective filing date to incorporate teachings of STADING in the method and system of COULT for the reasons as enumerated above in claims 1 and 18.
Re claims 7 and 27:
COULT, in view of STADING, VAN MEGCHELEN, and “Using the Wayback Machine to Archive (and Backup) WordPress, teaches the method according to claim 1 and system of claim 18, wherein STADING further teaches the step of entering, by means of said user interface, second information associated with said intellectual property rights virtual entity comprises entering one or more of the following items of information:
A unique identification alphanumeric code of said intellectual property rights; A filing date of said intellectual property rights; A type of intellectual property rights;
A legal status of the intellectual property rights; A unique alphanumeric code identifying a granting of said intellectual property rights; A date of the granting of said intellectual property rights; An alphanumeric code identifying a family of the intellectual property rights (i.e., patent numbers, date information, etc. [0031] [0053] [0096] [0129] [0130] [Figures 11-12].
It would have been obvious to one of ordinary skill in the art before the effective filing date to incorporate teachings of STADING in the method and system of COULT for the reasons as enumerated above in claims 1 and 18.
Re claim 9:
COULT, in view of STADING, VAN MEGCHELEN, and “Using the Wayback Machine to Archive (and Backup) WordPress, teaches the method according to claim 1, wherein STADING further teaches a step of interrupting an association, by means of the user interface, between at least one intellectual property rights virtual entity and at least one product virtual entity, with said association being established previously (i.e., erroneous mappings are removed by a user [0046]).
It would have been obvious to one of ordinary skill in the art before the effective filing date to incorporate teachings of STADING in the method and system of COULT to further include a step of interrupting an association having been previously established for the purpose of removing erroneous patent-product mappings (STADING [0046]).
Re claims 12 and 21:
COULT, in view of STADING, VAN MEGCHELEN, and “Using the Wayback Machine to Archive (and Backup) WordPress, teaches the method according to claim 1 and system of claim 18, comprising a step of generating a digital image, containing said alphanumeric string defining a URL type internet address [0092]-[0094] [0107] [0122].
Re claims 14 and 35:
COULT, in view of STADING, VAN MEGCHELEN, and “Using the Wayback Machine to Archive (and Backup) WordPress, teaches the method according to claim 1 and system of claim 18, comprising a step of storing in a remote archive of graphical informative content concerning the at least a part of said second information regarding the intellectual property rights virtual entities stored in association with the product virtual entity, said graphical informative content being visible as a result of an access to said URL type internet address (COULT [0101]; STADING [0034] [0052] [0123]).
Re claims 16, 22, 32, and 34:
COULT, in view of STADING, VAN MEGCHELEN, and “Using the Wayback Machine to Archive (and Backup) WordPress, teaches the method according to claim 1 and system of claim 21, wherein said physical support comprises a bar code, which codes the alphanumeric string defining a URL type internet address [0050].
COULT does not specify that the bar code is a QR code.
VAN MEGCHELEN teaches a QR code which codes the alphanumeric string defining the URL type internet address [0078].
It would have been obvious to one of ordinary skill in the art before the effective filing date for the bar code of COULT to be a QR code as QR codes are merely a common bar code format used in the art for encoding URLs.
Re claims 15 and 33:
COULT, in view of STADING, VAN MEGCHELEN, and “Using the Wayback Machine to Archive (and Backup) WordPress, teaches the method according to claim 1 and system of claim 32, comprising a step of preparing a physical support, on which the wording “patent” or “pat” or “patent pending” is marked and the alphanumeric string defining a URL type internet address [0122] [Figure 1B-5].
Re claim 17:
COULT, in view of STADING, VAN MEGCHELEN, and “Using the Wayback Machine to Archive (and Backup) WordPress, teaches a computer product which can be loaded in a memory of at least one process and comprises portions of software code for performing the steps of the method according to claim 1 (COULT [0156] [0157]; STADING [0027]).
Re claim 30:
COULT, in view of STADING, VAN MEGCHELEN, and “Using the Wayback Machine to Archive (and Backup) WordPress, teaches the method according to claim 12 and system according to claim 18, further provided with a printing module for printing a label, configured for transmitting to a desired electronic address, printing information of said label comprising the alphanumeric string [0131]-[0133].
Re claim 37:
COULT, in view of STADING, VAN MEGCHELEN, and “Using the Wayback Machine to Archive (and Backup) WordPress, teaches the system according to claim 18, wherein the first instructions are configured to make available a module for interrogating an on-line patent database, configured to interrogate said on-line patent data database and to extract patent documents referring to the intellectual property rights virtual entities generated (COULT [0157]-[0160]; STADING [0029].
Claim(s) 10-11, 29, and 36 is/are rejected under 35 U.S.C. 103 as being unpatentable over COULT, US 2002/0035571 in view of STADING et al, US 2014/0289675, VAN MEGCHELEN, US 2012/0055984, and “Using the Wayback Machine to Archive (and Backup) WordPress”, as applied in claims 12 and 18, and further in view of ERROR et al, US 2012/0203901.
Re claims 10-11 and 36:
COULT, in view of STADING, VAN MEGCHELEN, and “Using the Wayback Machine to Archive (and Backup) WordPress”, teaches the method according to claim 1 and system according to claim 18, but does not teach storing, as a result of an access to said URL type internet address, information for access to said URL type internet address; wherein the access information comprises a value indicating a number of accesses to said URL type internet address.
ERROR teaches a method and system for site traffic analysis reports, wherein a value indicating a number of accesses to a particular URL type internet address are stored as a result of an access to said URL type internet address [0025] [0029].
It would have been obvious to one of ordinary skill in the art before the effective filing date to further incorporate the teachings of ERROR in the method and system of COULT, in view of STADING, VAN MEGCHELEN, and “Using the Wayback Machine to Archive (and Backup) WordPress”, such that a value indicating a number of accesses to said URL type internet address is stored. Such incorporation provides useful statistical information regarding website traffic to businesses and product manufactures.
Claim(s) 13 and 31 is/are rejected under 35 U.S.C. 103 as being unpatentable over COULT, US 2002/0035571 in view of STADING et al, US 2014/0289675, VAN MEGCHELEN, US 2012/0055984, and “Using the Wayback Machine to Archive (and Backup) WordPress”, as applied in claims 12 and 18, and further in view of KAKINOKI, US 2020/0307849.
Re claims 13 and 31:
COULT, in view of STADING, VAN MEGCHELEN, and “Using the Wayback Machine to Archive (and Backup) WordPress”,, teaches the method according to claim 12 and system according to claim 30, but does not teach said printing information comprises one or more of the following items of information: a quantity of physical labels to be printed; a dimension of the labels; a delivery date of said labels; an electronic dispatch address to which to send at least a part of said printing information.
KAKINOKI teaches a label printing system comprising a step of entering printing information, comprising a quantity of physical labels to be printed and dimensions of the labels [0019] [0029] [0055] [0056].
It would have been obvious to one of ordinary skill in the art before the effective filing date to further incorporate the teachings of KAKINOKI in the method and system of COULT, in view of STADING, VAN MEGCHELEN, and “Using the Wayback Machine to Archive (and Backup) WordPress”, so as to include a step of entering a quantity and dimensions of physical labels to be printed for the purpose of providing user with the ability to provide the necessary information to the printing module to print a desired number of physical labels for a given product.
Claim(s) 5 and 25 is/are rejected under 35 U.S.C. 103 as being unpatentable over COULT, US 2002/0035571 in view of STADING et al, US 2014/0289675, VAN MEGCHELEN, US 2012/0055984, and “Using the Wayback Machine to Archive (and Backup) WordPress”, as applied in claims 3 and 23, and further in view of DELUCA et al, US 2011/0066977.
Re claims 5 and 25:
COULT, in view of STADING, VAN MEGCHELEN, and “Using the Wayback Machine to Archive (and Backup) WordPress”, teaches the method and system of claims 3 and 23, but does not teach the electronic file consists of a dynamic HTML page.
DELUCA teaches a method and system for generating a webpage (i.e., electronic file), wherein the webpage consists of a dynamic HTML page [0021].
It would have been obvious to one of ordinary skill in the art before the effective filing date to further incorporate the teachings of DELUCA in the method and system of COULT, in view of STADING, VAN MEGCHELEN, and “Using the Wayback Machine to Archive (and Backup) WordPress”, such that the electronic file consists of a dynamic HTML page for the purpose of facilitating the creation of an interactive webpage with which users may engage with (DELUCA [0021]).
Allowable Subject Matter
Claims 8 and 28 are allowed.
The following is an examiner’s statement of reasons for allowance:
Regarding independent claim 8:
The prior art of record fails to teach or fairly suggest, either singularly or in combination thereof, a method actuated by an electronic processor equipped with a user interface accessible through a communication network, comprising the following steps:- generating at least one "product" virtual entity;- entering, using said user interface, first information associated with said "product" virtual entity and storing said first information;- generating at least one "intellectual property rights" virtual entity;- entering, by said user interface, second information associated with said "intellectual property rights" virtual entity and storing said second information;- establishing an association, by the user interface, between at least one "intellectual property rights" virtual entity and at least one "product" virtual entity and storing said established association;- generating an alphanumeric string defining a unique URL Internet address for each "product" virtual entity;- providing, as a result of an access to said URL Internet address, at least a part of said second information regarding the "intellectual property rights" virtual entities stored in association with the "product" virtual entity; - providing, as a result of an access to said URL Internet address, at least a part of said second information regarding the "intellectual property rights" virtual entities stored in association with the "product" virtual entity;
wherein the step of establishing an association, by means of the user interface, at least one "intellectual property rights" virtual entity to at least one "product" virtual entity and storing said established association comprises a step of setting up an association between the at least one "intellectual property rights" virtual entity according to a "visible" or "invisible" mode, and wherein in the step of providing, as a result of the access to said URL, at least a part of said second information regarding the "intellectual property rights" virtual entities stored in association with the "product" virtual entity only the second information is provided corresponding to the "intellectual property rights" virtual entities associated in the "visible" mode to the "product" virtual entity and the second information is not provided corresponding to the "intellectual property rights" virtual entities associated in the "invisible" mode to the "product" virtual entity.
The system of claim 28 is allowed for substantially the same reason as claim 8.
Any comments considered necessary by applicant must be submitted no later than the payment of the issue fee and, to avoid processing delays, should preferably accompany the issue fee. Such submissions should be clearly labeled “Comments on Statement of Reasons for Allowance.”
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 LAURA A GUDORF whose telephone number is (571)270-7607. If the Examiner cannot be reached by telephone, she can be reached through the following e-mail address: laura.gudorf@uspto.gov. The examiner can normally be reached on M-F 6:00-4:00 PM.
If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Michael Lee, can be reached at telephone number (571)272-2398. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/LAURA A GUDORF/Primary Examiner, Art Unit 2876