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 .
Election/Restrictions
Claims 10-11 and 14 are withdrawn from further consideration pursuant to 37 CFR 1.142(b) as being drawn to a nonelected invention, there being no allowable generic or linking claim. Election was made without traverse in the reply filed on 11/27/2023.
Applicant’s election without traverse of claims 1-9 and 12-13 in the reply filed on 11/13/2025 is acknowledged.
Priority
The examiner acknowledges Applicant’s claim of benefit to Provisional Patent Application No. 63/356,177 filed on 6/28/2022.
Status of Claims
Applicant’s communications filed on 4/18/2023 and 11/13/2025 have been considered.
Claims 1-14 are currently pending.
Claims 10-11 and 14 have been withdrawn.
Claims 1-9 and 12-13 have been examined.
Claim Objections
Claims 1, 2 and 12 are objected to because of the following informalities:
Claim 1 recites “storing the link in a datastore accessible by the identification system”, however this limitation lacks antecedent basis regarding the link, as the claim only recites “thereby creating a digital link” in the prior limitations. It appears that this limitation is claimed in reference to the prior recited digital link, and in order to resolve the antecedent basis issue, appropriate correction is required.
Claim 12 recites similar subject matter to that recited in claim 1, and inherits the objection for the same reasons.
Claim 2 recites “wherein the uniquely identifiable item is wearable artifact, a display device, an electronic device adapted to play an audio or video message, a container” – should be – “wherein the uniquely identifiable item is a wearable artifact, a display device, an electronic device adapted to play an audio or video message, or a container.” It appears that one or more typographical errors was made with regards to the claim language. Appropriate correction is required.
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 1-9 and 12-13 are rejected under 35 U.S.C. 101 because the claimed invention is directed to an abstract idea without significantly more. The claims recite an abstract idea. The judicial exception is not integrated into a practical application. The claims do not include additional elements that are sufficient to amount to significantly more than the judicial exception.
Under Step 1 of the Subject Matter Eligibility Test for Products and Processes, the claims must be directed to one of the four statutory categories. See MPEP 2106.03. Claims 1-9 and 12-13 are directed towards a manufacture. Therefore, claims 1-9 and 12-13 are directed to one of the four statutory categories (Step 1: YES, regarding claims 1-9 and 12-13).
Under Step 2A of the MPEP, it is determined whether the claims are directed to a judicially recognized exception. See MPEP 2106.04. Step 2A is a two-prong inquiry.
Under Prong 1, it is determined whether the claim recites a judicial exception. In determining whether the claims are directed to a judicial exception, the claims are analyzed to evaluate whether the claims recite a judicial exception.
Taking Claim 1 as representative, claim 1 recites limitations that fall within the mental processes grouping of abstract ideas, including:
perform a method of creating an association with a physical item, the method comprising:
presenting on a display a representation of a physical item, wherein the physical item is uniquely identifiable;
receiving an indication of an asset to be associated with the selected physical item;
associating the asset with the physical item, thereby creating a link between the asset and the physical item; and
storing the link such that the asset is retrievable incident receiving a request to present the asset based on a subsequent capture of the uniquely identifiable item.
Claim 12 recites the same limitations believed to be abstract as recited in claim 1, and additionally recites:
causing a plurality of representations of physical items to be presented, wherein each of the physical items is uniquely identifiable;
receiving an indication of a selection of one of the representations of the physical items, thereby resulting in selected physical item;
receiving an indication of an asset to be associated with the selected physical item.
Claim 1, as exemplary, recites the abstract idea of associating and storing information for future use. These recited limitations fall within the "Mental Processes" Grouping of abstract ideas as it relates to receiving information, performing observation, evaluating/comparing said information, and providing judgement. Accordingly, the claim recites an abstract idea. See MPEP 2106.04.
Accordingly, under Prong One of Step 2A of the Alice/Mayo test, claims 1 and 12 recite an abstract idea (Step 2A, Prong One: YES).
Under Prong 2, it is determined whether the claim recites additional elements that integrate the exception into a practical application of the exception.
Claim 1 recites additional elements beyond the judicial exception(s), including One or more non-transitory computer-storage media having computer-executable instructions embodied thereon that, when executed by a computing device, cause the computing device to perform a method; creating a digital association with a physical item; a display of the computing device; an identification system; a digital asset; creating a digital link between the digital asset and the physical item; a datastore accessible by the identification system; and a subsequent digital capture. Claim 12 recites the same additional elements as recited in claim 1.
These additional elements are described at a high level in Applicant’s specification without any meaningful detail about their structure or configuration. As such, these computer-related limitations are not found to be sufficient to integrate the abstract idea into a practical application. Claims 1 and 12 specifying that the abstract idea of associating and storing information for future use is executed in a computer environment merely indicates a field of use in which to apply the abstract idea because this requirement merely limits the claims to the computer field, i.e., to execution on a generic computer. As such, under Prong Two of Step 2A of the Alice/Mayo test, when considered both individually and as a whole, the limitations of claims 1 and 12 are not indicative of integration into a practical application (Step 2A, Prong Two: NO).
Since claims 1 and 12 recite an abstract idea and fail to integrate the abstract idea into a practical application, claims 1 and 12 are “directed to” an abstract idea (Step 2A: YES). Accordingly, the judicial exception is not integrated into a practical application.
Next, under Step 2B, the instant claims do not include additional elements that are sufficient to amount to significantly more than the judicial exception because, as discussed above, the additional elements of One or more non-transitory computer-storage media having computer-executable instructions embodied thereon that, when executed by a computing device, cause the computing device to perform a method; creating a digital association with a physical item; a display of the computing device; an identification system; a digital asset; creating a digital link between the digital asset and the physical item; a datastore accessible by the identification system; and a subsequent digital capture amount to no more than mere instructions to apply the exception using generic computer components. For the same reason these elements are not sufficient to provide an inventive concept. Therefore when considering the additional elements alone, and in combination, there is no inventive concept in the claim, and thus the claim is not patent eligible (Step 2B: NO).
Dependent claims 2-9 and 13, when analyzed as a whole, are held to be patent ineligible under 35 U.S.C. 101 because they do not add “significantly more” to the abstract idea. As for dependent claims 3-5, 7-8 and 13, these claims recite limitations that further define the same abstract idea noted in independent claims 1 and 12, and do not recite any additional elements other than what is disclosed in independent claims 1 and 12. Therefore, claims 3-5, 7-8 and 13 are considered patent ineligible for the reasons given above.
As for dependent claims 6 and 9, these claims recite limitations that further define the abstract idea noted in independent claims 1 and 12. Additionally, they recite the following additional limitations:
wherein the digital asset includes one or more of a picture, video, textual message, or sound; and
wherein retrieving the digital asset includes retrieving a link to the digital asset and sending the link to a requesting device.
The additional elements of a picture, video, or sound; and retrieving a link to the digital asset and sending the link to a requesting device are all recited at a high level of generality such that they amount to no more than instructions to apply the judicial exception in a generic technological environment. Even in combination, these additional elements do not integrate the abstract idea into a practical application and do not amount to significantly more than the abstract idea itself. Accordingly, under the Alice/Mayo test, claims 1-9 and 12-13 are ineligible.
Claim Rejections - 35 USC § 102
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 the appropriate paragraphs of 35 U.S.C. 102 that form the basis for the rejections under this section made in this Office action:
A person shall be entitled to a patent unless –
(a)(1) the claimed invention was patented, described in a printed publication, or in public use, on sale, or otherwise available to the public before the effective filing date of the claimed invention.
(a)(2) the claimed invention was described in a patent issued under section 151, or in an application for patent published or deemed published under section 122(b), in which the patent or application, as the case may be, names another inventor and was effectively filed before the effective filing date of the claimed invention.
Claims 1-2, 5-9 and 12-13 are rejected under 35 U.S.C. 102(a)(1) and (a)(2) as being anticipated by U.S Patent Application No. 2017/0270324 A1 to Younger et al., hereinafter Younger.
Regarding Claim 1, Younger discloses One or more non-transitory computer-storage media having computer-executable instructions embodied thereon that, when executed by a computing device, cause the computing device to perform a method of creating a digital association with a physical item, the method comprising ([0023] systems, methods and computer-readable storage media to associate digital content with physical assets; [0068]):
presenting on a display of the computing device a representation of a physical item, wherein the physical item is uniquely identifiable by an identification system ([0046] a user logs in to an app and it is determined if the user has an existing account… if they already have products in their account, the main screen displays the products and the user may select the product for which they want to control the content associated therewith… see [Fig. 13] displaying images of products; [0028] NFC-enabled tags may be embedded in products… when a tag is read by an NFC-enabled device, the device presents pre-associated content that is stored in association with a local or cloud database for the tag);
receiving an indication of a digital asset to be associated with a selected physical item ([0046] if they already have products in their account, the main screen displays the products and the user may select the product for which they want to control the content associated therewith; [0053-0054] user is presented with a product memories screen 814, where they have the option to add photos from the user’s device via displayed photos from the user’s phone library);
associating the digital asset with the physical item, thereby creating a digital link between the digital asset and the physical item ([0054] The user may then select as many photos as desired 830 (see exemplary screen display with photos selected 832), confirm the photos selected 834, and then direct them 836 to be uploaded to the database 838. The product memory screen is then updated and presented with the new photos; [0063] FIG. 14 illustrates an exemplary screenshot 1400 wherein a user selects photos from a library associated with an NFC-enabled device to be associated with a tag in a product… see [Fig. 14]); and
storing the link in a datastore accessible by the identification system such that the digital asset is retrievable incident receiving a request to present the digital asset based on a subsequent digital capture of the uniquely identifiable item ([0035] the NFC-enabled device includes an NFC reader that reads the information associated with the tag and is directed to a database (e.g., a local or cloud database) where digital content associated with the tag is stored and may be accessed… the user may add content, such as digital files, to the database to be associated with the tag… see [0028] when a tag is read by an NFC-enabled device, the device presents pre-associated content that is stored in association with a local or cloud database for the tag; [0042] The photograph then may be stored, for instance, in association with the cloud. In a future time instance, when the user taps their phone 410 to the ornament 400, the tag may direct the telephone 410 to open the page and the photograph of the child at their first Christmas (or other digital content) may be presented).
Regarding Claim 2, Younger teaches the limitations of claim 1.
Younger further discloses wherein the uniquely identifiable item is a wearable artifact,
a display device,
an electronic device adapted to play an audio or video message, or
a container ([0046] if it is determined that a user has an existing account and has products in their account, the main screen displays product that a user may select to control the content associated therewith; [Fig. 13] depicts a sandbox as a product to which an NFC tag can be associated).
Regarding Claim 5, Younger teaches the limitations of claim 1.
Younger further discloses wherein the physical item includes one or more of the following attributes that are useable to uniquely identify the physical item: a set of specific geometric characteristics;
a set of specific markings;
a specific color,
one or more custom content items that are physically associated with the item ([0023] using Near Field Communication (NFC) smart “tags” associated with physical objects in conjunction with NFC-enabled devices; [0027] a user can “tap” their NFC-enabled device to the tag and use the app to assign digital content (e.g., photos, videos or other digital media) to the tag; [0029] Users of the app can also personalize a tag by associating digital content of their own creation) (Examiner notes that a personalized tag associated with user-specified digital content has been interpreted as one or more custom content items);
a near-field communication (NFC) tag ([0035] a user identifies an NFC-identifier or tag and taps his or her NFC-enabled device to the tag. As indicated at 112, the NFC-enabled device includes an NFC reader that reads the information associated with the tag and is directed to a database (e.g., a local or cloud database) where digital content associated with the tag is stored and may be accessed); or
a QR code.
Regarding Claim 6, Younger teaches the limitations of claim 1.
Younger further discloses wherein the digital asset includes one or more of a picture, video, textual message, or sound ([0023] digital content maybe provided by a purchaser of a physical asset and may include photos, videos, audio files, text files, data files, hyperlinks, and the like).
Regarding Claim 7, Younger teaches the limitations of claim 1.
Younger further discloses wherein the method further comprises: receiving a request to present the digital asset ([0035] a user identifies an NFC-identifier or tag and taps his or her NFC-enabled device to the tag); and
presenting the digital asset ([0036] upon receiving an indication that a tag has been read, a unique identifier (UID) for the tag is looked up in the look-up table and digital content associated with the UID is accessed and presented).
Regarding Claim 8, Younger teaches the limitations of claim 7.
Younger further discloses wherein presenting the digital asset comprising: receiving a representation of the physical item at the identification system ([0035] a user identifies an NFC-identifier or tag and taps his or her NFC-enabled device to the tag);
using one or more identifying attributes of the physical item to identify the digital asset stored in a data store ([0036] the database 216 may be configured to store NFC-tag identifiers and associated digital content references in a look-up table. In such embodiments, upon receiving an indication that a tag has been read, a unique identifier (UID) for the tag is looked up in the look-up table and digital content associated with the UID is accessed and presented);
retrieving the digital asset from the data store ([0036] upon receiving an indication that a tag has been read, a unique identifier (UID) for the tag is looked up in the look-up table and digital content associated with the UID is accessed and presented).
Regarding Claim 9, Younger teaches the limitations of claim 8.
Younger further discloses wherein retrieving the digital asset includes retrieving a link to the digital asset and sending the link to a requesting device ([0026] when a user places their NFC-enabled device in close proximity to an NFC tag, the tag will cause a hyperlink to be transmitted to the device and a webpage associated with the hyperlink will be opened in a browser; [0030] the user may be permitted to share a tag's content privately (e.g., via e-mail or text message) or share it with another user publicly, for instance, by sharing a link via text message, e-mail, social media or another digital means).
Regarding Claim 12, Younger discloses One or more non-transitory computer-storage media having computer-executable instructions embodied thereon that, when executed by a computing device, cause the computing device to perform a method of creating a digital association with a physical item, the method comprising ([0023] systems, methods and computer-readable storage media to associate digital content with physical assets; [0068]):
causing a plurality of representations of physical items to be presented on a computing device, wherein each of the physical items is uniquely identifiable by an identification system ([0046] a user logs in to an app and it is determined if the user has an existing account… if they already have products in their account, the main screen displays the products and the user may select the product for which they want to control the content associated therewith… see [Fig. 13] displaying images of products; [0028] NFC-enabled tags may be embedded in products… when a tag is read by an NFC-enabled device, the device presents pre-associated content that is stored in association with a local or cloud database for the tag) ;
receiving an indication of a selection of one of the representations of the physical items, thereby resulting in selected physical item ([0046] if they already have products in their account, the main screen displays the products and the user may select the product for which they want to control the content associated therewith; [0053-0054] user is presented with a product memories screen 814, where they have the option to add photos from the user’s device via displayed photos from the user’s phone library);
receiving an indication of a digital asset to be associated with the selected physical item ([0046] if they already have products in their account, the main screen displays the products and the user may select the product for which they want to control the content associated therewith; [0053-0054] user is presented with a product memories screen 814, where they have the option to add photos from the user’s device via displayed photos from the user’s phone library);
associating the digital asset with the selected physical item, thereby creating a digital link between the digital asset and the selected physical item ([0054] The user may then select as many photos as desired 830 (see exemplary screen display with photos selected 832), confirm the photos selected 834, and then direct them 836 to be uploaded to the database 838. The product memory screen is then updated and presented with the new photos; [0063] FIG. 14 illustrates an exemplary screenshot 1400 wherein a user selects photos from a library associated with an NFC-enabled device to be associated with a tag in a product… see [Fig. 14]); and
storing the link in a datastore accessible by the identification system such that the digital asset is retrievable incident to receiving a scan of the uniquely identifiable physical item ([0035] the NFC-enabled device includes an NFC reader that reads the information associated with the tag and is directed to a database (e.g., a local or cloud database) where digital content associated with the tag is stored and may be accessed… the user may add content, such as digital files, to the database to be associated with the tag… see [0028] when a tag is read by an NFC-enabled device, the device presents pre-associated content that is stored in association with a local or cloud database for the tag; [0042] The photograph then may be stored, for instance, in association with the cloud. In a future time instance, when the user taps their phone 410 to the ornament 400, the tag may direct the telephone 410 to open the page and the photograph of the child at their first Christmas (or other digital content) may be presented).
Regarding Claim 13, Younger teaches the limitations of claim 12.
Younger further discloses wherein the method further comprises: receiving a request to present the digital asset, wherein the request includes a reference to a representation of the physical item ([0035] a user identifies an NFC-identifier or tag and taps his or her NFC-enabled device to the tag); and
utilizing the representation of the physical item to identify the digital asset ([0036] upon receiving an indication that a tag has been read, a unique identifier (UID) for the tag is looked up in the look-up table and digital content associated with the UID is accessed and presented); and
providing instructions to present the digital asset ([0036] upon receiving an indication that a tag has been read, a unique identifier (UID) for the tag is looked up in the look-up table and digital content associated with the UID is accessed and presented).
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.
Claim 3 is rejected under 35 U.S.C. 103 as being unpatentable over Younger in view of U.S Patent Application No. 2011/0246212 A1 to Barnes, hereinafter Barnes, and further in view of U.S Patent Application No. 2023/0109753 A1 to Alston, hereinafter Alston.
Regarding Claim 3, Younger teaches the limitations of claim 1.
Younger does not explicitly disclose wherein a wearable artifact includes jewelry, clothing, accessories, or hats; wherein a display device includes a picture frame, a figuring, a clock, a wall-hanging item, or a furniture accessory; and wherein a container includes a water bottle, keychain, wallet, lunch box, or cooler.
Barnes, on the other hand, is similarly directed to creating a digital association with a physical item ([0044-0045] users may register owned high value assets within a high value asset server, where the owner and other interested parties may access and view information regarding the high value asset), and further discloses wherein a wearable artifact includes jewelry ([0042] a high value asset may be jewelry), clothing, accessories ([0042] a high value asset may be jewelry), or hats; and
wherein a display device includes a picture frame, a figuring ([0041] a high value asset may be a sculpture), a clock, a wall-hanging item ([0040] a high value asset may be a painting or photograph), or a furniture accessory.
It would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to include in the system, as taught by Younger, wherein a wearable artifact includes jewelry, clothing, accessories, or hats; and wherein a display device includes a picture frame, a figuring, a clock, a wall-hanging item, or a furniture accessory, as taught by Barnes, since the claimed invention is merely a combination of old elements, and in the combination each element merely would have performed the same function as it did separately, and one of ordinary skill in the art would have recognized that the results of the combination were predictable. It further would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to modify Younger, to include the teachings of Barnes, in order for an owner of an object to register and view information regarding the object, as well as to allow other parties to access and view information regarding assets that the owner owns (Barnes, [0037][0044-0045]).
Alston, on the other hand, is similarly directed to creating a digital association with a physical item ([0034][0039][0041] a user may capture an image/video of an object using an electronic device, and the server subsequently identifies the object via image analysis and identifies a second image stored in a database depicting the same object, along with augmented reality content associated with the second image of the object in the database, including information or a graphic associated with the object), and further discloses wherein a container includes a water bottle, keychain ([0090] tags are secured to objects such as memorabilia items, where the tag includes a hole through which a keychain ring can loop or extend… see [Fig. 9] depicting the keychain), wallet, lunch box, or cooler.
It would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to include in the system, as taught by Younger and Barnes, wherein a container includes a water bottle, keychain, wallet, lunch box, or cooler, as taught by Alston, since the claimed invention is merely a combination of old elements, and in the combination each element merely would have performed the same function as it did separately, and one of ordinary skill in the art would have recognized that the results of the combination were predictable. It further would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to modify Younger and Barnes, to include the teachings of Alston, in order to ensure authenticity and validity of owned objects (Alston, [0037][0044-0045]).
Claim 4 is rejected under 35 U.S.C. 103 as being unpatentable over Younger in view of Barnes.
Regarding Claim 4, Younger teaches the limitations of claim 2.
Younger does not explicitly disclose wherein a piece of jewelry includes an engraving of handwriting.
Barnes, on the other hand, further discloses wherein a piece of jewelry includes an engraving of handwriting ([0042] for a high value asset that is jewelry, information is collected, such as a status relating to the jewelry being signed).
It would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to include in the system, as taught by Younger, wherein a piece of jewelry includes an engraving of handwriting, as taught by Barnes, for the same reasons discussed above with respect to claim 3.
Conclusion
The prior art made of record and not relied upon is considered pertinent to applicant's disclosure.
U.S Patent No. 9,984,727 B2 to Walters et al. – An application for electronically tagging interest items, such that retrieval of the tag activates a playback application containing playback files associated with the tags.
U.S Patent No. 9,165,233 B2 to Testanero – Method, system, apparatus for automatically linking technical information to an NFC tag to be adhered to an object, such that tapping the NFC tag with an NFC enabled device provided automatic access to the information.
Any inquiry concerning this communication or earlier communications from the examiner should be directed to ZACHARY R DONAHUE whose telephone number is (571)272-5850. The examiner can normally be reached M-F 8a-5p.
Examiner interviews are available via telephone, in-person, and video conferencing using a USPTO supplied web-based collaboration tool. To schedule an interview, applicant is encouraged to use the USPTO Automated Interview Request (AIR) at http://www.uspto.gov/interviewpractice.
If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Marissa Thein can be reached at (571) 272-6764. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/ZACHARY RYAN DONAHUE/Examiner, Art Unit 3689
/MARISSA THEIN/Supervisory Patent Examiner, Art Unit 3689