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 .
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 5/14/2026 have been considered.
Claims 5, 7-9, and 12-13 have been cancelled.
Claims 1-4 and 6 are currently pending and have been examined.
Claim Objections
Claims 2-4 and 6 are objected to because of the following informalities:
Claims 2-4 and 6 recite “the media” within their respective preambles, which is not recited in independent claim 1. The claims have been interpreted as reciting “the non-transitory computer-storage media” as recited in claim 1.
Claim 3 recites “wherein the wearable artifact includes jewelry, clothing, accessories, or hats; wherein the display device includes a picture frame, a figuring, a clock, a wall-hanging item, or a furniture accessory; and wherein the container includes a water bottle, keychain, wallet, lunch box, or cooler.” It is noted that the wearable artifact, the display device, and the container are not recited in independent claim 1. The claims have been interpreted as reciting “wherein the uniquely identifiable item is a wearable artifact including jewelry, clothing, accessories, or hats; wherein the uniquely identifiable item is a display device including a picture frame, a figuring, a clock, a wall-hanging item, or a furniture accessory; and wherein the uniquely identifiable item is a container including a water bottle, keychain, wallet, lunch box, or cooler.”
Claim 4 recites “wherein the piece of jewelry includes an engraving of handwriting.” It is noted that the piece of jewelry is not recited in claim 2 (from which claim 4 depends), nor independent claim 1. The claims have been interpreted as reciting “wherein the uniquely identifiable item is a piece of jewelry including an engraving of handwriting.”
Appropriate correction is required.
Response to Arguments
Applicant’s arguments filed with respect to the previously filed objections of the claims have been fully considered.
Applicant’s arguments on page 1 regarding the previously filed objections of claims 1 and 2 have been considered and are persuasive, and accordingly the previously filed objections of claims 1 and 2 have been withdrawn. However, it is noted that new claim objections have been applied to claims 2-4 and 6 in this rejection.
Applicant’s arguments filed with respect to the rejection of claims under 35 USC 101 have been fully considered but they are not persuasive.
Applicant argues on pages 1-3 that the claims recite patent eligible subject matter under 35 USC 101 because amended claim 1 does not fit within the “Mental Processes” grouping of abstract ideas. This argument has been considered but is not persuasive in view of the claimed amendments. As discussed in the 101 rejection of the claims, below, the amended claims recite a method of organizing human activity, and accordingly recite an abstract idea. Applicant is reminded that in Prong One examiner evaluate whether the claim recites any judicial exception, i.e., whether a law of nature, natural phenomenon, or abstract idea is set forth or described in the claim. Arguments directed to practical applications and computer improvements are analyzed under Step 2A, Prong Two and not within Step 2A, Prong One Despite Applicant’s assertion to the contrary, Examiner maintains that the claims recite certain methods of organizing human activity in view of the claimed amendments, and accordingly recite an abstract idea, for the reasons set forth below (Step 2A, prong one: No). Accordingly, Applicant’s arguments regarding the claims not fitting within the “Mental Processes” grouping of abstract ideas are rendered moot.
Applicant further argues on page 3 that amended claim 1 recites an improvement in technology and integrates a solution into a practical application by solving the problem of being unable to couple a digital complement with a physical gift, and by using the characteristics of a physical object as a lookup key while simultaneously preventing false positives such as presenting a digital asset that was meant to presented to a different user, such that only digital assets provided by certain senders are identified and allowed to be presented. This argument has been considered but is not persuasive. As claimed, these elements represent the mere use of generic computing components to facilitate the abstract idea.
If it is asserted that the invention improves upon conventional function of a computer, or upon conventional technology or technological processes, a technical explanation as to how to implement the invention should be present in the specification. That is, the disclosure must provide sufficient details such that one of ordinary skill in the art would recognize the claimed invention as providing an improvement. Although the specification need not explicitly set forth the improvement, it must describe the invention such that the improvement would be apparent to one of ordinary skill in the art. Conversely, if the specification explicitly sets forth an improvement but in a conclusory manner (i.e., a bare assertion of an improvement without the detail necessary to be apparent to a person of ordinary skill in the art), the examiner should not determine the claim improves technology (see MPEP 2106.05(a); MPEP 2106.04(d)(1)).
Applicant’s specification does not provide sufficient technical detail to describe the manner in which the claimed invention provides a technical solution to a technical problem of being unable to couple a digital complement with a physical gift, and by using the characteristics of a physical object as a lookup key while simultaneously preventing false positive. The specification does not describe coupling a digital complement with a physical gift, or preventing false positives, in a manner that a technical solution to a technical problem is apparent. Furthermore, a lookup key is described in the specification in a generic manner that is not evident of an improvement to technology (see at least [0053]). One of ordinary skill in the art would not be able to recognize the claimed invention as providing an improvement in light of the specification, as the specification is specific only in using the claimed additional elements (a computing device, a digital asset, a digital link, a datastore, digitally extracting, and a second computing device) in facilitating the abstract idea of facilitating a gifting process for unique items. The specification does not provide sufficient technical detail of how any of the claimed additional elements operate differently than from generic devices performing generic functions. Furthermore, using the characteristics of a physical object as a lookup key while simultaneously preventing false positives such that only certain senders are identified and allowed to be presented to recipients is directed towards an improvement in the abstract idea, and does not describe or reflect a change or improvement to the claimed technology.
Accordingly, Examiner maintains the claims recite an abstract idea and fail to integrate the abstract idea into a practical application. Accordingly, the judicial exception is not integrated into a practical application (Step 2A, prong 2: No).
With regards to Applicant’s argument on page 3 that “no mental process would be able to identify a recipient based only on attributes of a physical object”, this argument is not persuasive for the reasons discussed in the above paragraph. Furthermore, this argument does not apply to the test performed to determine eligibility. As noted below, the claims currently stand rejected under the 101 Alice/Mayo framework for eligibility (see MPEP 2106). Furthermore, it is noted that the broadest reasonable interpretation of amended claim 1 does not include identifying a recipient based only on attributes of a physical object, and accordingly Applicant’s argument is not commensurate with the scope of the claim.
Accordingly, the rejection has been maintained.
Applicant’s arguments filed with respect to the rejection of claims under 35 USC 102 and 103 have been fully considered but are rendered moot under new grounds of rejection.
Applicant argues on pages 3-4 that the amended claims overcome the previous rejection under 35 USC 102 because Younger does not disclose the amended limitations. This argument has been considered but has been rendered moot under new grounds of rejection in view of Applicant’s amendments. Applicant’s amendments have altered the scope of independent claim 1, such that independent claim 1 currently stands rejected under 35 USC 103, with newly cited Kargaran (US 2021/0192003 A1) relied upon as the primary reference, in view of previously cited Younger (US 2017/0270324 A1).
With regards to Applicant’s argument that “[previously cited Younger] lacks any verification step to distinguish between two physical objects that might look identical but are associated with different recipients (and thus, respectively associated with different digital assets)”, it is noted that this argument is not persuasive because Applicant’s arguments are not commensurate in scope with the claimed subject matter of claim 1. Amended claim 1 does not require distinguishing between two physical objects that might look identical but are associated with different recipients.
Accordingly, the claims stand rejected under 35 USC 103.
Applicant further argues on pages 4-7 that claim 3 overcomes previously cited Younger in view of Barnes (US 2011/0246212 A1) and Alston (US 2023/0109753 A1). This argument has been considered but is rendered moot under new grounds of rejection. The references previously relied upon for the dependent claims have been modified in view of the new grounds of rejection with respect to independent claim 1 in view of the claimed amendments. Claim 3 currently stands rejected in view of Kargaran in view of Younger and newly cited Lin (US 2017/0221265 A1). Accordingly, the rejection has been maintained under new grounds of rejection.
Claim Rejections - 35 USC § 112
The following is a quotation of the first paragraph of 35 U.S.C. 112(a):
(a) IN GENERAL.—The specification shall contain a written description of the invention, and of the manner and process of making and using it, in such full, clear, concise, and exact terms as to enable any person skilled in the art to which it pertains, or with which it is most nearly connected, to make and use the same, and shall set forth the best mode contemplated by the inventor or joint inventor of carrying out the invention.
Claims 1-4 and 6 are rejected under 35 U.S.C. 112(a) or 35 U.S.C. 112 (pre-AIA ), first paragraph, as failing to comply with the written description requirement. The claim(s) contains subject matter which was not described in the specification in such a way as to reasonably convey to one skilled in the relevant art that the inventor or a joint inventor, or for applications subject to pre-AIA 35 U.S.C. 112, the inventor(s), at the time the application was filed, had possession of the claimed invention.
The claim(s) contains subject matter which was not described in the specification in such a way as to reasonably convey to one skilled in the relevant art that the inventor or a joint inventor, or for applications subject to pre-AIA 35 U.S.C. 112, the inventor(s), at the time the application was filed, had possession of the claimed invention.
Regarding Claim 1, the claim has been amended to recite: “receiving supplemental information and a second representation of a second physical item, wherein the supplemental information corresponds to the sender information; using the identification system to digitally extract a second set of geometric characteristics that characterize the second physical item; using the digitally extracted second set of geometric characteristics and the supplemental information to determine that the second physical item is the uniquely identifiable physical item based on the second set of geometric characteristics matching the first set of geometric characteristics and based on the supplemental information corresponding to the sender information, thereby identifying the uniquely identifiable physical item as a lookup key”. These claimed limitations represents new matter because a review of the originally filed disclosure does not describe the particulars of receiving a second representation of a second physical item, extracting a second set of geometric characteristics that characterize the second physical item, and determining that the second item is the uniquely identifiable physical item. It is noted that, as claimed, “a second physical item” is claimed as being a physical item different from the “uniquely identifiable physical item”. The originally filed disclosure recites that a uniquely identifiable physical item is identifiable by the identification system upon a subsequent presentation of an image of the physical item (see at least [0121]), and additionally, after a digital asset is associated with a selected uniquely identifiable physical item, such as a picture frame or jewelry, the physical item can then be identified, using identifying attributes of the physical item to identify and retrieve the digital asset for presentation (see at least [0128-0132]; [Fig. 6][0085-0089]). However, the disclosure does not explicitly disclose that a second physical item, different than the uniquely identifiable physical item, may be determined as being the uniquely identifiable physical item based on a second set of geometric characteristics of the second physical item matching a first set of geometric characteristics of the uniquely identifiable physical item. Specifically, the amended language is not supported by the originally filed specification.
Therefore, the subject matter of the claim, recited above, does not conform to the disclosure in such a manner in which one of ordinary skill in the art would recognize the claimed limitations as being what the Applicant adequately described as the invention or what the Applicant actually had possession of at the time of the invention. Applicant’s failure to disclose receiving a second representation of a second physical item, using the identification system to digitally extract a second set of geometric characteristics that characterize the second physical item, and using the digitally extracted second set of geometric characteristics to determine that the second physical item is the uniquely identifiable physical item raises questions as to whether Applicant truly had possession of this feature at the time of filing and thereby fails to comply with the written description requirement. See MPEP 2163.
Claims 2-4 and 6 depend from claim 1, and therefore inherit the deficiencies of claim 1, as discussed above.
The following is a quotation of 35 U.S.C. 112(b):
(b) CONCLUSION.—The specification shall conclude with one or more claims particularly pointing out and distinctly claiming the subject matter which the inventor or a joint inventor regards as the invention.
The following is a quotation of 35 U.S.C. 112 (pre-AIA ), second paragraph:
The specification shall conclude with one or more claims particularly pointing out and distinctly claiming the subject matter which the applicant regards as his invention.
Claims 1-4 and 6 are rejected under 35 U.S.C. 112(b) or 35 U.S.C. 112 (pre-AIA ), second paragraph, as being indefinite for failing to particularly point out and distinctly claim the subject matter which the inventor or a joint inventor (or for applications subject to pre-AIA 35 U.S.C. 112, the applicant), regards as the invention.
Regarding Claim 1, the claim recites “receiving supplemental information and a second representation of a second physical item, wherein the supplemental information corresponds to the sender information; using the identification system to digitally extract a second set of geometric characteristics that characterize the second physical item; using the digitally extracted second set of geometric characteristics and the supplemental information to determine that the second physical item is the uniquely identifiable physical item based on the second set of geometric characteristics matching the first set of geometric characteristics and based on the supplemental information corresponding to the sender information, thereby identifying the uniquely identifiable physical item as a lookup key”. The metes and bounds of this claim is unclear inasmuch as one of ordinary skill in the art cannot determine how to avoid infringement of this claim because they are not apprised of how a second physical item, different than the claimed uniquely identifiable physical item, could be determined as being the uniquely identifiable physical item. As noted above, as claimed, the second physical item is claimed as being a physical item different from the “uniquely identifiable physical item”. The specification does not disclose any meaningful structure/algorithm explaining how it is determined that the second physical item is the uniquely identifiable physical item based on the second set of geometric characteristics of the second physical item matching the first set of geometric characteristics of the uniquely identifiable physical item, rendering it unclear to how this is accomplished and what are the metes and bounds of the claim. As described in the specification, the limitations have been interpreted as receiving two representations of a physical item.
For examination purposes, the limitations at lines 19-29 of claim 1 have been interpreted as:
receiving supplemental information and a second representation of a physical item, wherein the supplemental information corresponds to the sender information;
using the identification system to digitally extract a second set of geometric characteristics that characterize the second representation of the physical item;
using the digitally extracted second set of geometric characteristics and the supplemental information to determine that the second representation of the physical item is the uniquely identifiable physical item based on the second set of geometric characteristics matching the first set of geometric characteristics and based on the supplemental information corresponding to the sender information, thereby identifying the uniquely identifiable physical item as a lookup key.
Claims 2-4 and 6 depend from claim 1, and therefore inherit the deficiencies of claim 1, as discussed above.
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 1-4 and 6 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 1-4 and 6 are directed towards a manufacture. Therefore, claims 1-4 and 6 are directed to one of the four statutory categories (Step 1: YES, regarding claims 1-4 and 6).
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 certain methods of organizing human activity groupings of abstract ideas, including:
perform a method, the method comprising:
receiving from a sender a first representation of a uniquely identifiable physical item that is characterized by a first set of geometric characteristics that are useable by an identification system to identify the physical item;
presenting the first representation of the physical item;
receiving an indication of an asset and sender information to be associated with the physical item;
associating the asset with the uniquely identifiable physical item and the sender, thereby creating a link between the asset and the uniquely identifiable physical item;
storing the link such that the asset is retrievable incident to receiving a request to present the asset based on a subsequent capture of the uniquely identifiable physical item;
receiving supplemental information and a second representation of a physical item, wherein the supplemental information corresponds to the sender information;
using the identification system to extract a second set of geometric characteristics that characterize the second representation of the physical item;
using the extracted second set of geometric characteristics and the supplemental information to determine that the second representation of the physical item is the uniquely identifiable physical item based on the second set of geometric characteristics matching the first set of geometric characteristics and based on the supplemental information corresponding to the sender information, thereby identifying the uniquely identifiable physical item as a lookup key;
using the uniquely identifiable physical item as a lookup key in the identification system to identify the asset based on the link that links the asset to the uniquely identifiable physical item; and
presenting the asset.
Claim 1 recites certain methods of organizing human activity, such as managing personal behavior or relationships or interactions between people. See MPEP 2106.04(a)(2). The MPEP defines the “Certain Methods of Organizing Human Activity” grouping as including fundamental economic principles or practices (including hedging, insurance, mitigating risk); commercial or legal interactions (including agreements in the form of contracts; legal obligations; advertising, marketing or sales activities or behaviors; business relations); managing personal behavior or relationships or interactions between people (including social activities, teaching, and following rules or instructions) (see MPEP § 2106.04(a)(2). The abstract ideas recited in representative claim 1 are managing personal behavior or relationships or interactions between people because receiving a representation of a uniquely identifiable physical item characterized by a first set of geometric characteristics, associating an asset with the uniquely identifiable item and a sender, thereby creating a link, storing the link for subsequent capture, receiving a second representation of a physical item, determining that the second representation of the physical item is the uniquely identifiable physical item based on a second set of geometric characteristics matching the first set of geometric characteristics, and presenting the asset is managing personal behavior or relationships or interactions between people because it includes social activities. The specification (see at least [0002][0072-0074][0103]) further discusses linking gifts, such as a physical greeting card, with memories, messages, or experiences, where a sender may prepare a gift, such as a greeting cart, and send the gift to a recipient, who receives the card, further indicating that the claimed process is directed towards facilitating a gifting process, and accordingly recites activity falling under managing personal behavior or relationships or interactions between people.
Accordingly, under Prong One of Step 2A of the Alice/Mayo test, claim 1 recites an abstract idea (Step 2A, Prong One: YES).
Under Step 2A (prong 2), if it is determined that the claims recite a judicial exception, it is then necessary to evaluate whether the claims recite additional elements that integrate the judicial exception into a practical application of that exception (see MPEP 2106.04). As stated in the MPEP, when “an additional element merely recites the words ‘apply it (or an equivalent) with the judicial exception, or merely uses a computer as a tool to perform an abstract idea,” the judicial exception has not been integrated into a practical application. In this case, representative claim 1 includes additional elements such as (additional elements are bolded):
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, the method comprising:
receiving from a sender a first representation of a uniquely identifiable physical item that is characterized by a first set of geometric characteristics that are useable by an identification system to identify the physical item;
presenting on a display of the computing device the first representation of the physical item;
receiving an indication of a digital asset and sender information to be associated with the physical item;
associating the digital asset with the uniquely identifiable physical item and the sender, thereby creating a digital link between the digital asset and the uniquely identifiable physical item;
storing the digital link in a datastore accessible by the identification system such that the digital asset is retrievable incident to receiving a request to present the digital asset based on a subsequent digital capture of the uniquely identifiable physical item;
receiving supplemental information and a second representation of a physical item, wherein the supplemental information corresponds to the sender information;
using the identification system to digitally extract a second set of geometric characteristics that characterize the second representation of the physical item;
using the digitally extracted second set of geometric characteristics and the supplemental information to determine that the second representation of the physical item is the uniquely identifiable physical item based on the second set of geometric characteristics matching the first set of geometric characteristics and based on the supplemental information corresponding to the sender information, thereby identifying the uniquely identifiable physical item as a lookup key;
using the uniquely identifiable physical item as a lookup key in the identification system to identify the digital asset based on the digital link that links the digital asset to the uniquely identifiable physical item; and
presenting the digital asset on a second computing device.
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. Claim 1 specifying that the abstract idea 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 claim 1 are not indicative of integration into a practical application (Step 2A, Prong Two: NO).
Since claim 1 recites an abstract idea and fail to integrate the abstract idea into a practical application, claim 1 is “directed to” an abstract idea (Step 2A: YES). Accordingly, the judicial exception is not integrated into a practical application.
Next, under Step 2B, examiners should evaluate additional elements individually and in combination to determine whether they provide an inventive concept (i.e., whether the additional elements amount to significantly more than the exception itself). In this case, the claims do not include additional elements that are sufficient to amount to significantly more than the judicial exception. Returning to representative claim 1, taken individually or as a whole the additional elements of claim 1 amount to no more than mere instructions to apply the exception using a generic computer and/or no more than a general link to a technological environment. 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 2-4 and 6, 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 3-4, these claims recite limitations that further define the same abstract idea noted in independent claim 1, and do not recite any additional elements other than what is disclosed in independent claim 1. Therefore, claims 5-6, 9, 14-15, and 18 are considered patent ineligible for the reasons given above.
As for dependent claims 2 and 6, the claims recites limitations that further define the abstract idea noted in independent claim 1. Additionally, they recite the following additional limitations:
wherein the uniquely physical item is a wearable artifact, a display device, an electronic device adapted to play an audio or video message, or a container; and
wherein the digital asset includes one or more of a picture, video, textual message, or sound.
The additional elements of an electronic device adapted to play an audio or video message; and a picture or video 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 1-4 and 6 are ineligible.
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(s) 1, 2 and 6 is/are rejected under 35 U.S.C. 103 as being unpatentable over newly cited Kargaran (US 2021/0192003 A1) in view of previously cited Younger (US 2017/0270324 A1).
Regarding Claim 1, Kargaran 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, the method comprising ([Fig. 4]; [0038-0039]; [0042]):
receiving from a sender a first representation of a uniquely identifiable physical item that is characterized by a first set of geometric characteristics that are useable by an identification system to identify the physical item ([0029-0030] a first smartphone 406 reads the code from the tag 402 associated with the physical object 404; [0033] a second smartphone 414 reads the code from the same tag 402 (which may be connected with or associated with the physical object 404); [0037] code may be a QR code; see [0021-0022] translating the generated URL of a target website into a QR code using a QR code generator by encoding the alphanumeric characters into sequence of black/white pixels in data region of QR code… the QR code can be attached, hung, affixed, snapped to, glued on, or otherwise associated with a physical object; [0023] a user scans the QR code with a scanner device such as a camera… QR-code recognizing software opens the URL webpage; see [Fig. 1]);
presenting on a display of the computing device information of the physical item ([0027] the web server sends a webpage to the browser to render a button or other user-selectable graphical feature that allows the user to upload their content to a newly-created folder… the webpage is re-rendered to show a confirmation and uploading indicator while the content is being processed; [Fig. 3]);
receiving an indication of a digital asset and sender information to be associated with the physical item ([0032] The media generation application allows a user of the first smartphone 406 to create or generate a media file, which is associated with the code provided by the tag 402; see [0029] a tag 402 that is associated with a physical object 404, where the tag 402 includes, embeds, or otherwise stores a code… the code can be changed and/or augmented with additional information, such as a user UD; [0030] a first smartphone 406 reads the code from the tag 402 associated with the physical object 404);
associating the digital asset with the uniquely identifiable physical item and the sender, thereby creating a digital link between the digital asset and the uniquely identifiable physical item ([0032] the first smartphone 406 uploads the media file associated with the code to a server 408 via a network 412, where it can be stored on a database 410 associated with the server 408, and where such storage includes the code associated with the tag 402; see [0029] the code can be augmented with additional information, such as… user ID);
storing the digital link in a datastore accessible by the identification system such that the digital asset is retrievable incident to receiving a request to present the digital asset based on a subsequent digital capture of the uniquely identifiable physical item ([0032-0033] the media file… can be stored on a database 410 associated with the server… The media file can thereafter be accessible from the database 410 and downloadable from the server 408 via the network 408 by a second smartphone 414 that reads the code from the same tag 402 (which may still be connected with or associated with the physical object 404); see [Figs. 3 and 4]);
receiving supplemental information and a second representation of a physical item, wherein the supplemental information corresponds to the sender information ([0033] a second smartphone 414 reads the code from the same tag 402 (which may still be connected with or associated with the physical object 404); see [0023] a user scans the QR code with a scanner device… QR-code recognizing software opens the URL webpage; [0029] the code can be augmented with additional information, such as… user ID);
using the identification system to digitally extract a second set of geometric characteristics that characterize the second representation of the physical item ([0033] a second smartphone 414 that reads the code from the same tag 402 (which may still be connected with or associated with the physical object 404); see [0021-0022] translating the generated URL of a target website into a QR code using a QR code generator by encoding the alphanumeric characters into sequence of black/white pixels in data region of QR code; [0023] a user scans the QR code with a scanner device… QR-code recognizing software opens the URL webpage) (Note: The uniquely identifiable physical item of the first representation is the same as the physical item of the second representation. See Rejections under 112(b), above);
using the digitally extracted second set of geometric characteristics and the supplemental information to determine that the second representation of the physical item is the uniquely identifiable physical item based on the second set of geometric characteristics matching the first set of geometric characteristics and based on the supplemental information corresponding to the sender information, thereby identifying the uniquely identifiable physical item as a lookup key ([0033] the media file can be accessible from the database… a second smartphone 414 that reads the code from the same tag 402 (which may still be connected with or associated with the physical object 404); see [Fig. 3] step 314 “database returns matching record”; [0026-0027] QR code contains the target website URL containing an ID parameter… the web service checks the database for a previously created folder with a name that matches the URL query parameter ID; [0028] If the database returns results for a folder with the name that matches the URL ID query parameter… the web server generates a webpage that contains HTML elements that renders content);
using the uniquely identifiable physical item as a lookup key in the identification system to identify the digital asset based on the digital link that links the digital asset to the uniquely identifiable physical item ([0033] the media file can be accessible from the database… a second smartphone 414 that reads the code from the same tag 402 (which may still be connected with or associated with the physical object 404); [Fig. 3] step 314 “database returns matching record”; [0026-0027] the target website URL contains an ID parameter… the web service checks the database for a previously created folder with a name that matches the URL query parameter ID; [0028] If the database returns results for a folder with the name that matches the URL ID query parameter… the web server queries the database for all rows that contain the URL ID parameter as the group name… the web server generates a webpage that contains HTML elements that renders content); and
presenting the digital asset on a second computing device ([0033] Once downloaded… the media file is playable by the second smartphone 414, which includes its own instance of the media generation application to be able to play the media file; see [Fig. 4] device 414; see [0028] he browser receives HTTP response from web service and renders the HTML, elements, to stream, display or render the content on the user device to the user).
Kargaran discloses presenting on a display of the computing device regarding the physical item (see at least Kargaran [0027]), receiving an indication of a digital asset and sender information to be associated with the physical item ([0029][0032]), associating the digital asset with the uniquely identifiable physical item and the sender ([0029][0032]), receiving a second representation of a second physical item ([0023][0033]), and determining that the second physical item is the uniquely identifiable physical item based on the second set of geometric characteristics matching the first set of geometric characteristics ([0026-0028][0033][Fig. 3]). However, Kargaran does not explicitly teach presenting on a display the first representation.
However, in the field of managing digital content associated with physical objects of users (see at least Younger [abstract][0022-0023]), Younger, on the other hand, teaches presenting on a display the first representation ([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] depicting product representations).
The steps of Younger are applicable to the system of Kargaran, as they share characteristics and capabilities, namely, they are directed to managing digital content associated with physical objects of users. It would have been obvious to one of ordinary skill in the art at the time of filing to modify the digital asset management system as taught by Kargaran, to include presenting on a display the first representation, as taught by Younger. One of ordinary skill in the art at the time of filing would have been motivated to expand the digital asset management system of Kargaran in order to allow users to select/specify the product for which they want to control digital content, such as when they have multiple products in a user account with embedded tags (Younger, [0046]).
Regarding Claim 2, Kargaran in view of Younger teaches the limitations of claim 1.
Kargaran further discloses wherein the uniquely identifiable physical item is a wearable artifact, a display device, an electronic device adapted to play an audio or video message, or a container ([0030] the physical object 404 can be any physical object, such as a… accessory (such as a watch, bracelet, necklace, etc.), a box or other packaging, etc.) (Note: According to the limitation reciting “or”, only one of the claimed options must be disclosed. Kargaran has been relied upon as disclosing a wearable artifact and a container).
Regarding Claim 6, Kargaran in view of Younger teaches the limitations of claim 1.
Kargaran further discloses wherein the digital asset includes one or more of a picture, video, textual message, or sound ([0036] In the case of the media file including video, the video can include buttons or other controls embedded in the video file).
Claim 3 is rejected under 35 U.S.C. 103 as being unpatentable over Kargaran in view of Younger, and further in view of newly cited Lin (US 2017/0221265 A1).
Regarding Claim 3, Kargaran in view of Younger teaches the limitations of claim 1.
Kargaran further discloses wherein the uniquely identifiable item is a wearable artifact including jewelry, clothing, accessories, or hats ([0030] the physical object 404 can be any physical object, such as a… accessory (such as a watch, bracelet, necklace, etc.)); and
wherein the uniquely identifiable item is a container ([0030] a box or other packaging, etc.).
Kargaran discloses the uniquely identifiable item, and wherein the uniquely identifiable item is a container, and additionally that the uniquely identifiable item can be any physical object (see at least Kargaran [0029-0033]). However, Kargaran in view of Younger does not explicitly teach wherein the uniquely identifiable item is a display device including a picture frame, a figuring, a clock, a wall-hanging item, or a furniture accessory; and a container including a water bottle, keychain, wallet, lunch box, or cooler.
However, in the field of identifying/associating media assets with physical objects (see at least Lin [abstract]), Lin, on the other hand, teaches wherein the uniquely identifiable item is a display device including a picture frame, a figuring, a clock, a wall-hanging item, or a furniture accessory ([0043] a physical object may be a sculpture or a work of art) (Note: A figuring has been interpreted as a figurine, per Applicant’s specification ([0257]); and
a container including a water bottle, keychain, wallet, lunch box, or cooler ([0123-0125][0132-0134] a physical object may be a water bottle).
The steps of Lin are applicable to the system of Kargaran in view of Younger, as they share characteristics and capabilities, namely, they are directed to managing digital content associated with physical objects of users. It would have been obvious to one of ordinary skill in the art at the time of filing to modify the digital asset management system as taught by Kargaran in view of Younger, to include wherein the uniquely identifiable item is a display device including a picture frame, a figuring, a clock, a wall-hanging item, or a furniture accessory; and a container including a water bottle, keychain, wallet, lunch box, or cooler, as taught by Lin. One of ordinary skill in the art at the time of filing would have been motivated to expand the digital asset management system of Kargaran in view of Younger in order to provide for recognition of multiple different physical objects, since there are different ways in which users interact with the physical object (Lin, [0002-0004]).
Claim 4 is rejected under 35 U.S.C. 103 as being unpatentable over Kargaran in view of Younger, and further in view of newly cited Gibson et al. (US 2018/0349676 A1).
Regarding Claim 4, Kargaran in view of Younger teaches the limitations of claim 1.
Kargaran further discloses wherein the uniquely identifiable item is a piece of jewelry ([0030] the physical object 404 can be any physical object, such as a… accessory (such as a watch, bracelet, necklace, etc.)).
While Kargaran discloses wherein the uniquely identifiable item is a piece of jewelry (see at least Kargaran [0030]), and additionally that each QR code generates a unique URL ([0027]), Kargaran in view of Younger does not explicitly teach the uniquely identifiable item including an engraving of handwriting.
However, in the field of managing uniquely identifiable items to be provided to users (see at least Gibson [abstract][0003][0196]), Gibson, on the other hand, teaches the uniquely identifiable item including an engraving of handwriting ([0051] a plurality of handwritten signatures of an artist may be stored in a database… Each of the handwritten signatures may be a unique signature that can be authenticated as the artist's handwriting… a physical plotting machine engraves… the handwritten signature on a physical object).
The steps of Gibson are applicable to the system of Kargaran in view of Younger, as they share characteristics and capabilities, namely, they are directed to managing uniquely identifiable items to be provided to users. It would have been obvious to one of ordinary skill in the art at the time of filing to modify the uniquely identifiable item management system as taught by Kargaran in view of Younger, to include the uniquely identifiable item including an engraving of handwriting, as taught by Gibson. One of ordinary skill in the art at the time of filing would have been motivated to expand the uniquely identifiable item management system of Kargaran in view of Younger in order to provide for authentication of objects that are limited via a unique signature, as well as prevent fraud (Gibson [0010][0051-0055]).
Conclusion
Applicant's amendment necessitated the new ground(s) of rejection presented in this Office action. Accordingly, THIS ACTION IS MADE FINAL. See MPEP § 706.07(a). 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.
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/ZACHARY RYAN DONAHUE/Examiner, Art Unit 3689
/MARISSA THEIN/Supervisory Patent Examiner, Art Unit 3689
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