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 .
Status of the Claims
Claims 1-3, 6-12, 14, 17-19, 21-22, 25-26 and 29-30 are pending. Claims 1, 3, 12, 14, 19, 22 and 26 are amended. Claims 4-5, 13, 15-16, 23-24 and 27-28 are cancelled.
Priority
Applicant’s claim for the benefit of a prior-filed application under 35 U.S.C. 119(e) or under 35 U.S.C. 120, 121, 365(c), or 386(c) is acknowledged.
Response to Arguments
Applicant’s arguments, filed 01/22/2026, with respect to the 101 rejection has been considered and is not persuasive.
Applicant argues, on page 10, that the amended claims integrates the judicial exception into a practical application because the limitations apply the judicial exception in a manner that imposes a meaningful limit on the judicial exception.
Examiner respectfully disagrees. The claim limitations as drafted, recite a concept, that, under broadest reasonable interpretation, is a certain method of organizing human activity. The limitations are analogous to managing personal behavior or interactions between people (interactions between people), or a commercial or legal interaction (sales activity) such as matching of goods or items for record maintenance (See specification, par. 0002). The additional elements are recited at a high-level of generality such that they amount to no more than generally linking the use of a judicial exception to a particular technological environment or field of use. Accordingly, the additional elements (computer elements, scanner, digital token, database, etc), when viewed individually and in combination, do not integrate the abstract idea into a practical application because they do not impose any meaningful limits on practicing the abstract idea. The claims do not amount to more than generally linking the use of a judicial exception to a particular technological environment or field of use
Claim Rejections - 35 USC § 101
35 U.S.C. 101 reads as follows:
Whoever invents or discovers any new and useful process, machine, manufacture, or composition of matter, or any new and useful improvement thereof, may obtain a patent therefor, subject to the conditions and requirements of this title.
Claims 1-3, 6-12, 14, 17-19, 21-22, 25-26 and 29-30 are rejected under 35 U.S.C. 101 because the claimed invention is directed to an abstract idea without significantly more.
Step 1
Claims 1-3, 6-12, 14, 17-19, 21-22, 25-26 and 29-30 are directed to a series of steps, and therefore is a process.
Independent Claims
Step 2A Prong One
The limitation of Claim 1 recites:
A method of uniquely identifying an item, the item being a member of a batch of nominally identical items, wherein:
each item is characterised by variability within the batch with respect to at least one inherent characteristic of the item; and
the at least one inherent characteristic of the item arises from creation of the item;
said method comprising:
… enable a scan of the item;
scanning each item … capable of resolving the at least one inherent characteristic and configured each item with respect to said at least one inherent characteristic thereby to acquire data on the at least one inherent characteristic sufficient to uniquely distinguish the item from other items of the batch;
creating a … (token), …, from the acquired data on the scan which contains data which is a function of said at least one inherent characteristic, wherein the … (token) is configured to be compared with another scan of a purported item;
transmitting and storing the … (token)….
wherein the …. (token) is accessible to entities within a chain of possession of the item: and
wherein the scan of the purported item establishes whether the purported item has the same inherent characteristic as the item.
The limitation of Claim 19 recites:
A method for tracking an item, the item being a member of a batch of nominally identical items, comprising, for each item of the batch, the steps of:
… enable a scan of the item;
performing a scan of the item,…, wherein … is configured to resolve at least one inherent characteristic of the item and the scan produces data relating to the inherent characteristic:
retrieving, a … (token) of the item stored …, wherein the … (token) contains data representing a previous scan of the item;
comparing, …, the data of the scan of the item to the … (token): and
monitoring parameters of the item periodically after the scan;
wherein the comparison between the data of the scan and the data associated with the … (token) determines whether the inherent characteristics found with the scan matches the inherent characteristics found within the data associated with the … (token); and
wherein monitoring comprises updating the … (token) with the parameters.
The limitation of Claim 29 recites:
A method of tracking an item, the item being a member of a batch of nominally identical items and each characterised by variability with the batch with respect to at least one inherent characteristic of the item, the method comprising:
… configured to enable a scan of the item;
scanning each item a first time with … capable of resolving the at least one inherent characteristic and configured, with respect to said at least one inherent characteristic, to acquire a first set of data on the at least one inherent characteristic sufficient to uniquely distinguish the item from other items of the batch;
creating a … (token), …, to store the acquired first set of data;
transmitting and storing the … (token) on …;
scanning each item a second time … to obtain a second set of data;
retrieving the … (token) of the item stored …;
comparing, …, the second set of data to the first set of data;
identifying, …, similarities and differences between the at least one inherent characteristic of the item found in first set of data and the second set of data; and
determining, using the identified similarities and differences between the at least one inherent characteristic of the item found in the first set of data and the second set of data whether the item scanned the second time is the same item as the item scanned the first time;
wherein the at least one inherent characteristic is at least one of:
a genetic code of the item;
data pertaining to physical characteristics of the item;
a facial characteristic of the item; and
hide pattern of the item.
The claim limitations as drafted, recite a concept, that, under broadest reasonable interpretation, is a certain method of organizing human activity. The limitations are analogous to managing personal behavior or interactions between people (interactions between people), or a commercial or legal interaction (sales activity) such as matching of goods or items for record maintenance. Accordingly, the claims recite an abstract idea.
Step 2A Prong Two
The judicial exception is not integrated into a practical application. In particular, the claims recite the following additional elements:
Claim 1:
executing, via a processor, code stored in a memory device, wherein the code is configured to
Scanner
Digital token
database
Claim 19:
executing, via a processor, code stored in a memory device, wherein the code is configured to
Digital form
Database
Claim 29
executing, via a processor, code stored in a memory device, wherein the code is
scanner
digital token
database
These additional elements are recited at a high-level of generality such that they amount to no more than generally linking the use of a judicial exception to a particular technological environment or field of use. Accordingly, the additional elements, when viewed individually and in combination, do not integrate the abstract idea into a practical application because they do not impose any meaningful limits on practicing the abstract idea. The claims do not amount to more than generally linking the use of a judicial exception to a particular technological environment or field of use (see MPEP 2106.05(h)). Therefore, the claims recite an abstract idea.
Step 2B
As discussed above with respect to Step 2A Prong Two, the additional elements, amount to no more than generally linking the use of a judicial exception to a particular technological environment or field of use. The same analysis applies here in 2B. The additional elements, when considered separately and in combination, do not add significantly more to the exception. They are generally linking the use of a judicial exception to a particular technological environment or field of use and cannot integrate a judicial exception into a practical application at Step 2A or provide an inventive concept in Step 2B. The claims are ineligible.
Dependent Claims
Step 2A Prong One
Dependent claims 2-3, 6-12, 14, 17-18, 21-22, 25-26 and 30 further narrow the same abstract ideas recited in Claims 1 and 19. Therefore, claims 2-3, 6-12, 14, 17-18, 21-22, 25-26 and 30 are directed to an abstract idea for the reasons given above.
No additional elements
There are no further additional elements recited in dependent claims (apart from those already recited and analyzed above in the independent claims) that change the character of the limitations. Therefore, the claims are directed to ineligible subject matter.
Claim Rejections - 35 USC § 103
In the event the determination of the status of the application as subject to AIA 35 U.S.C. 102 and 103 (or as subject to pre-AIA 35 U.S.C. 102 and 103) is incorrect, any correction of the statutory basis (i.e., changing from AIA to pre-AIA ) for the rejection will not be considered a new ground of rejection if the prior art relied upon, and the rationale supporting the rejection, would be the same under either status.
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.
This application currently names joint inventors. In considering patentability of the claims the examiner presumes that the subject matter of the various claims was commonly owned as of the effective filing date of the claimed invention(s) absent any evidence to the contrary. Applicant is advised of the obligation under 37 CFR 1.56 to point out the inventor and effective filing dates of each claim that was not commonly owned as of the effective filing date of the later invention in order for the examiner to consider the applicability of 35 U.S.C. 102(b)(2)(C) for any potential 35 U.S.C. 102(a)(2) prior art against the later invention.
The factual inquiries for establishing a background for determining obviousness under 35 U.S.C. 103 are summarized as follows:
1. Determining the scope and contents of the prior art.
2. Ascertaining the differences between the prior art and the claims at issue.
3. Resolving the level of ordinary skill in the pertinent art.
4. Considering objective evidence present in the application indicating obviousness or nonobviousness.
Claims 1-3, 6-7, 11-12, 14, 17-19, 21-22, 25-26 and 29 are rejected under 35 U.S.C. 103 as being unpatentable over Hopkins (US10521780B1) and in further view of “Autocheck” https://www.autocheck.com/vehiclehistory/vin-basics (VIN information, since 1981).
Claim 1: Hopkins teaches A method of uniquely identifying an item, the item being a member of a batch of nominally identical items, wherein:
said method comprising:
executing, via a processor, code stored in a memory device, wherein the code is configured to enable a scan of the item; (Hopkins, “processor” in col. 2, ll. 10-26 and Fig. 7;“A blockchain may be populated with data that includes text, scanned images, or any other data formats or data types.” in col. 5, ll. 45-57)
scanning each item with a scanner capable of resolving the at least one inherent characteristic and configured each item with respect to said at least one inherent characteristic thereby to acquire data on the at least one inherent characteristic sufficient to uniquely distinguish the item from other items of the batch; (Hopkins “The buyer and/or seller may have access to a blockchain that stores data regarding the vehicle. Such data may include title information, liens, repair history, parts history, odometer information, manufacturer information, warranties, usage patterns such as accident history, ratio of freeway to city street mileage, and so forth.” in col. 4, ll. 67-col. 5, ll. 22; and “Blockchain(s) may also be employed to store information related to accidents, repairs, or other events…Such information may include vehicle identification information…data from user devices such as smartphones or wearable computers” in col. 6, ll. 43-58)
creating a digital token, via the processor, from the acquired data on the scan which contains data which is a function of said at least one inherent characteristic, wherein the digital token is configured to be compared with another scan of a purported item; and
transmitting and storing the digital token on a database; (Hopkins “On scanning or otherwise entering the VIN, the buyer may use the app to access information regarding the vehicle to verify the seller's statements regarding repair history, auto parts, title, previous owners, odometer reading, existing liens, and so forth.” in col. 4, ll. 26-46 ; “the data may be hashed to create a digital digest that is employable as a one-way encryption proof of the data when it is presented. The digital digest may be added into the blockchain(s). In some examples, the original data may be stored in blockchain(s) along with the digital digest of the data…a cryptographic key may be employed to access data directly on the blockchain” in col. 5, ll. 45-57)
wherein the digital token is accessible to entities within a chain of possession of the item; (Hopkins “the data may be hashed to create a digital digest that is employable as a one-way encryption proof of the data when it is presented. The digital digest may be added into the blockchain(s). In some examples, the original data may be stored in blockchain(s) along with the digital digest of the data…a cryptographic key may be employed to access data directly on the blockchain” in col. 5, ll. 45-57) and
wherein the scan of the purported item establishes whether the purported item has the same inherent characteristic as the item. (Hopkins “On scanning or otherwise entering the VIN, the buyer may use the app to access information regarding the vehicle to verify the seller's statements regarding repair history, auto parts, title, previous owners, odometer reading, existing liens, and so forth.” in col. 4, ll. 26-46)
While Hopkins does not specifically address the variability within each item in a batch with at least one inherent characteristic of the item, Hopkins does use a VIN in creating a digital token for a vehicle. The rejection is relying on Autocheck to specifically explain how each vehicle when manufactured includes a vehicle identification number for each vehicle in a batch of vehicles being manufactured since 1981*. Therefore, Autocheck teaches:
each item is characterised by variability within the batch with respect to at least one inherent characteristic of the item; (see “A VIN is composed of 17 characters (digits and capital letters) that act as a unique identifier for the vehicle. A VIN displays the car's unique features, specifications and manufacturer.” in page 1 of Autocheck) and
the at least one inherent characteristic of the item arises from creation of the item; (see “A VIN is composed of 17 characters (digits and capital letters) that act as a unique identifier for the vehicle. A VIN displays the car's unique features, specifications and manufacturer.” In page 1 of Autocheck)
It would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to modify the method of Hopkins to include characterizing the variability within the batch of each item as taught by Autocheck. One of ordinary skill in the art before the effective filing date of the claimed invention would have been motivated to modify Hopkins in order to serve as the car's fingerprint, as no two vehicles in operation have the same VIN (see page 1 of Autocheck).
Claim 2: Hopkins and Autocheck teach The method of claim 1 wherein the at least one inherent characteristic is a measurable property. (Autocheck, page 1: unique features)
See above rationale to combine.
Claim 3: Hopkins and Autocheck teach The method of claim 2 wherein the measurable property is at least one of:
a genetic code of the item,
a facial characteristic of the item, (Autocheck, page 1: unique features)
and a hide pattern of the item.
See above rationale to combine.
Claim 6: Hopkins and Autocheck teach The method of claim 1 wherein the inherent characteristic includes data pertaining to physical characteristics of the item. (Autocheck, page 1: unique features)
Claim 7: Hopkins and Autocheck teach The method of claim 6 wherein the data is time-based data. (Autocheck, page 1: model year)
Claim 11: Hopkins and Autocheck teach The method of claim 1 wherein the at least one inherent characteristic is a characteristic observable in an image formed by scanning of a portion of the item. (Hopkins, Col. 6 ll 43-58: images)
Claim 12: Hopkins and Autocheck teach The method of claim 11 wherein the image is at least one of: a portion of a surface of the item; and a selected image from a plurality of images of the item taken under different lighting conditions or from different viewpoints. (Hopkins, Col. 6 ll 43-58: images of parts)
Claim 14: Hopkins and Autocheck teach The method of claim 1 wherein the inherent characteristic is at least one of: weight, transparency, dimension of the item, colour, distribution of colour of the item, and a marking applied to the item in the course of manufacture. (Autocheck, page 1: unique features)
Claim 17: Hopkins and Autocheck teach The method of claim 1 wherein at least first and second inherent characteristics of the item are scanned whereby to uniquely distinguish the item from other members of the batch. (Autocheck, page 1: VIN, unique features)
Claim 18: Hopkins and Autocheck teach The method of claim 17 wherein the first and second inherent characteristics are different inherent characteristics of the item. (Autocheck, page 1: VIN, unique features)
Claims 19
Claim 19 is directed to a method. Claim 19 recites limitations that are parallel in nature as those addressed above for claim 1 which is also directed towards a method. Claim 19 is therefore rejected for the same reasons as set forth above for claim 1.
Claim 21: Hopkins and Autocheck teach The method of claim 19 wherein the at least one inherent characteristic is a measurable property. (Autocheck, page 1: unique features)
Claim 22: Hopkins and Autocheck teach The method of claim 21 wherein the measurable property is at least one of:
a genetic code of the item, a facial characteristic of the item, and hide pattern of the item. (Autocheck, page 1: unique features)
Claim 25: Hopkins and Autocheck teach The method of claim 19 wherein the inherent characteristic includes data pertaining to physical characteristics of the item. (Autocheck, page 1: unique features)
Claim 26: Hopkins and Autocheck teach The method of claim 19 wherein the parameter is at least one of: location, milk output, and physiology data. (Hopkins, Col. 6 ll 43-58: location information)
Claim 29
Claim 29 is directed to a method. Claim 29 recites limitations that are parallel in nature as those addressed above for claim 1 which is also directed towards a method. Claim 29 is therefore rejected for the same reasons as set forth above for claims 1-3, respectively.
Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to ISMAIL A MANEJWALA whose telephone number is (571)272-8904. The examiner can normally be reached M-F 8-5.
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If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Nathan Uber can be reached on 571-270-3923. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/ISMAIL A MANEJWALA/Primary Examiner, Art Unit 3628
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