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 .
Response to Arguments
Applicant's arguments filed 16 September 2025 have been fully considered but they are not persuasive. Applicant's amendment necessitated the new ground(s) of rejection presented in this Office action. Please see the response to arguments below in the present Office action.
In response to the applicant's argument that "[a]s explained below, the present invention, as recited in claims 1 and 3, is a practical application that yields technical benefits and improvements in a specific technological context," the Examiner traverses. The method of the claimed invention recites computer-implemented steps (storing, transforming, converting, determining, etc.), and thus, the claims merely recite data manipulation. The process of converting a color image into a hyperspectral image, then into grayscale, and comparing grayscale values to thresholds constitutes processing and analyzing information. Such steps are abstract mental processes and mathematical relationships performed by a generic computer (Examiner notes that applicant has yet to respond to the entirety of the 35 USC § 101 rejection originally given in the previous Office action, dated 02 July 2025). The claims do not impose a meaningful limitation on how these results are achieved beyond the use of a computer to execute generic image-processing functions. Alice Corp., 573 U.S. at 225-26, 110 USPQ2d at 1984 (See MPEP § 2106.05(f)); ii. Simply appending well-understood, routine, conventional activities previously known to the industry, specified at a high level of generality, to the judicial exception, e.g., a claim to an abstract idea requiring no more than a generic computer to perform generic computer functions that are well-understood, routine and conventional activities previously known to the industry, as discussed in Alice Corp., 573 U.S. at 225, 110 USPQ2d at 1984 (See MPEP § 2106.05(d));’ See MPEP § 2106.05. Thus, the claims instead merely apply well-known digital processing operations to the abstract task of determining authenticity.
In response to the applicant's argument that "[c]laim 1 is directed to "a method for inspecting authenticity of a hologram," which is a specific technological process designed to address a real-world technical problem namely, the challenge of verifying the authenticity of a hologram. In other words, the claims are integrated into a real-world use case with tangible results i.e., determining whether a hologram is authentic or counterfeit. This is a problem that arises specifically in the context of physical, optical security, and it demands technical insight to resolve. Therefore, applicant submits that claim 1 is directed to a technological solution to a technological problem and is thus patent-eligible under step 2A, prong two of the eligibility analysis," the Examiner traverses. The claims as written do not recite any specific improvement in holographic imaging, optics, or sensor hardware. Claims 1-3 of the present invention are limited to data analysis steps following image acquisition, not to any improvement in how holograms are captured or processed at the device level. “[l]ikewise, eligibility should not be evaluated based on whether the claim recites a "useful, concrete, and tangible result," State Street Bank, 149 F.3d 1368, 1374, 47 USPQ2d 1596, 1602 (Fed. Cir. 1998) (quoting In re Alappat, 33 F.3d 1526, 1544, 31 USPQ2d 1545, 1557 (Fed. Cir. 1994)), as this test has been superseded. In re Bilski, 545 F.3d 943, 959-60, 88 USPQ2d 1385, 1394-95 (Fed. Cir. 2008) (en banc), aff'd by Bilski v. Kappos, 561 U.S. 593, 95 USPQ2d 1001 (2010). See also TLI Communications LLC v. AV Automotive LLC, 823 F.3d 607, 613, 118 USPQ2d 1744, 1748 (Fed. Cir. 2016) (“It is well-settled that mere recitation of concrete, tangible components is insufficient to confer patent eligibility to an otherwise abstract idea”).” See MPEP § 2106. The alleged “tangible result” (i.e., determining authenticity) is simply the output of the computer’s information processing and is not a transformation of an article or improvement to technology. “Whether the claim recites only the idea of a solution or outcome i.e., the claim fails to recite details of how a solution to a problem is accomplished. The recitation of claim limitations that attempt to cover any solution to an identified problem with no restriction on how the result is accomplished and no description of the mechanism for accomplishing the result, does not integrate a judicial exception into a practical application or provide significantly more because this type of recitation is equivalent to the words “apply it”. See Electric Power Group, LLC v. Alstom, S.A., 830 F.3d 1350, 1356, 119 USPQ2d 1739, 1743-44 (Fed. Cir. 2016).” Thus, the claims fail to integrate the abstract idea into a practical application under Step 2A, Prong 2, nor do they recite significantly more under Step 2B. See MPEP § 2106.04(d) & 2106.05(a)-(c).
Furthermore, applicant’s arguments rely on language solely recited in preamble recitations in claim(s) 1. When reading the preamble in the context of the entire claim, the recitation "a method for inspecting authenticity of a hologram," is not limiting because the body of the claim describes a complete invention and the language recited solely in the preamble does not provide any distinct definition of any of the claimed invention’s limitations. Thus, the preamble of the claim(s) is not considered a limitation and is of no significance to claim construction. See Pitney Bowes, Inc. v. Hewlett-Packard Co., 182 F.3d 1298, 1305, 51 USPQ2d 1161, 1165 (Fed. Cir. 1999). See MPEP § 2111.02.
In response to the applicant's argument that "[h]owever, importantly, Sakakibara fails to disclose the claimed step of transforming the color image into a hyperspectral image as described and claimed in the present application," the Examiner traverses. Examiner reminds the applicant that ‘[t]he express, implicit, and inherent disclosures of a prior art reference may be relied upon in the rejection of claims under 35 U.S.C. 102 or 103. “The inherent teaching of a prior art reference, a question of fact, arises both in the context of anticipation and obviousness.”’ In re Napier, 55 F.3d 610, 613, 34 USPQ2d 1782, 1784 (Fed. Cir. 1995) See also In re Grasselli, 713 F.2d 731, 739, 218 USPQ 769, 775 (Fed. Cir. 1983) & MPEP § 2112.
In the instant case, Sakakibara discloses a method for inspecting authenticity of a hologram (accurate authentication of a hologram image with a change in density as seen in the captured image H1; [0036]), comprising steps of: by a computer device (authenticity determination device 10-2; [0027]) that stores a color image of the hologram (authenticity discriminating apparatus 10-2 captures a hologram image composed of a plurality of colors on the imaging unit 40-2; [0036]), transforming the color image into a hyperspectral image (authenticity discriminating apparatus 10-2 captures hologram image composed of plurality of colors on imaging unit 40-2 by limiting wavelength to specific wavelength by wavelength specifying unit 60, and captured image by authenticity determining unit 50, and thus, utilizes hyperspectral imaging; [0036]) that includes information with respect to a plurality of wavelengths (images composed of a plurality of colors are captured; [0033], image obtained by imaging a plurality of wavelengths; [0008], plurality of wavelengths, for example, a plurality of colors; [0003]).
Applicant's arguments do not comply with 37 CFR 1.111(c) because they do not clearly point out the patentable novelty which he or she thinks the claims present in view of the state of the art disclosed by the references cited or the objections made. Further, they do not show how the amendments avoid such references or objections.
Applicant's arguments fail to comply with 37 CFR 1.111(b) because they amount to a general allegation that the claims define a patentable invention without specifically pointing out how the language of the claims patentably distinguishes them from the references.
Drawings
The applicant’s drawings submitted are acceptable for examination purposes.
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 and 3 are rejected under 35 U.S.C. 101 because the claimed invention is directed to non-statutory subject matter: abstract ideas of mathematical concepts MPEP § 2106.04(a)(2)(I) and mental processes MPEP § 2106.04(a)(2)(III) and is directed to a judicial exception without reciting significantly more, and therefore the claim is patent ineligible subject matter.
The claimed invention is directed to a judicial exception: a combination of mental processes and mathematical concepts without significantly more. Claim 1 recites receiving and storing an image of a hologram, segmenting image into color channels, identifying differences and visual patterns, and classifying the result as either authentic or not authentic. Claim 3 recites steps of determining authenticity by averaging values. These steps in Claims 1 and 3 are directed to data analysis and classification, for this is a mental process that could be performed by a human given adequate data and includes mathematical concepts e.g., image transformation, pattern recognition, averaging values etc. The claimed method of collecting imaging data, identifying visual patterns, and classifying the result for authenticity falls within the abstract idea category of data analysis and interpretation, and thus, is held ineligible under 101.
‘Claims do recite a mental process when they contain limitations that can practically be performed in the human mind, including for example, observations, evaluations, judgments, and opinions. Examples of claims that recite mental processes include: a claim to “collecting information, analyzing it, and displaying certain results of the collection and analysis,” where the data analysis steps are recited at a high level of generality such that they could practically be performed in the human mind, Electric Power Group v. Alstom, S.A., 830 F.3d 1350, 1353-54, 119 USPQ2d 1739, 1741-42 (Fed. Cir. 2016);’ See MPEP § 2106.04(a)(2).
This judicial exception is not integrated into a practical application because, although the claim(s) recite(s) e.g., a computer device, it is utilized to collect data (storing color image of a hologram), process that data through image transformation (transforming color image into hyperspectral image and hyperspectral image conversion to grayscale image), and output a result (determining authenticity based on grayscale values and thresholds). All of these steps represent routine and conventional use of generic computer technology, for there is no recitation of technological improvement or inventive concept, for segmentation and classification are well-known concepts in the image analysis field.
The claim(s) does/do not include additional elements that are sufficient to amount to significantly more than the judicial exception because, although the additional element of e.g., a computer device is recited in Claim 1, it is recited at a high level of generality and performs well-understood, routine, and conventional functions. The computer device performs no improvement to itself, no algorithm, no processing technique, and there is no meaningful limitation confining the abstract idea (involving mental processes, mathematical modeling, and data analysis, etc.) to a particular implementation beyond a generic computer component. ‘Limitations that the courts have found not to be enough to qualify as “significantly more” when recited in a claim with a judicial exception include: i. Adding the words “apply it” (or an equivalent) with the judicial exception, or mere instructions to implement an abstract idea on a computer, e.g., a limitation indicating that a particular function such as creating and maintaining electronic records is performed by a computer, as discussed in Alice Corp., 573 U.S. at 225-26, 110 USPQ2d at 1984 (See MPEP § 2106.05(f)); ii. Simply appending well-understood, routine, conventional activities previously known to the industry, specified at a high level of generality, to the judicial exception, e.g., a claim to an abstract idea requiring no more than a generic computer to perform generic computer functions that are well-understood, routine and conventional activities previously known to the industry, as discussed in Alice Corp., 573 U.S. at 225, 110 USPQ2d at 1984 (See MPEP § 2106.05(d));’ See MPEP § 2106.05.
Accordingly, Claims 1 and 3 are rejected under 35 U.S.C. 101.
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.
Claims 1-3 are rejected under 35 U.S.C. 102(a)(1) as being anticipated by Sakakibara JP 2010014550 A (see machine translation).
With respect to Claim 1, Sakakibara discloses a method for inspecting authenticity of a hologram (accurate authentication of a hologram image with a change in density as seen in the captured image H1; [0036]), comprising steps of:
by a computer device (authenticity determination device 10-2; [0027]) that stores a color image of the hologram (authenticity discriminating apparatus 10-2 captures a hologram image composed of a plurality of colors on the imaging unit 40-2; [0036]), transforming the color image into a hyperspectral image (authenticity discriminating apparatus 10-2 captures hologram image composed of plurality of colors on imaging unit 40-2 by limiting wavelength to specific wavelength by wavelength specifying unit 60, and captured image by authenticity determining unit 50, and thus, utilizes hyperspectral imaging; [0036]) that includes information with respect to a plurality of wavelengths (images composed of a plurality of colors are captured; [0033], image obtained by imaging a plurality of wavelengths; [0008], plurality of wavelengths, for example, a plurality of colors; [0003]);
by the computer device (authenticity determination device 10-2; [0027]), converting the hyperspectral image (images composed of a plurality of colors are captured; [0033]) into a grayscale image (when the captured image shown in fig. 7a is input from the imaging unit 40-2, the authenticity discriminating unit 50-2 of authenticity determination device 10-2 converts each captured image into a gray color with black and light shades changed as shown in fig. 7b; [0037]); and
by the computer device (authenticity determination device 10-2; [0027]), determining authenticity of the hologram based on multiple grayscale values in a region of interest in the grayscale image (authenticity discriminating apparatus 10-2 can evaluate the degree of shading according to the gray scale gradation; [0036]) and multiple grayscale thresholds (gradation is set in multiple stages, for example, 32; [0031]) that respectively correspond to different wavelengths (hologram image of the hologram reflected by light of a specific wavelength according to the degree of shading i.e., step division, level division, e.g., grayscales and stores it in the memory as a sample image; [0030], through wavelength specifying unit 60; [0037]).
Under the principles of inherency, if a prior art device, in its normal and usual operation, would necessarily perform the method claimed, then the method claimed will be considered to be anticipated by the prior art device. When the prior art device is the same as a device described in the specification for carrying out the claimed method, it can be assumed the device will inherently perform the claimed process. See In re King, 801 F.2d 1324, 231 USPQ 136 (Fed. Cir. 1986). See also MPEP § 2112.02.
With respect to Claim 2, Sakakibara discloses the method as claimed in claim 1, further comprising, between the step of transforming and the step of converting (fig. 5-8b), a step of, by the computer device (authenticity determination device 10-2; [0027]), removing a part of information of the hyperspectral image that corresponds to wavelengths falling outside of a predetermined range of wavelengths (wavelength specifying unit 60 is an optical filter that receives the reflected light of the hologram 100-2 and transmits only the reflected light of a specific wavelength to the imaging unit 40-2 of authenticity determination device 10-2, and thus, filters out a portion of hyperspectral imaging data; [0032]).
With respect to Claim 3, Sakakibara discloses the method as claimed in claim 1, wherein the step of determining authenticity (performed by authenticity determination device 10-2; [0027]) includes:
averaging, for each of the different wavelengths (wavelength specifying unit 60 receiving different wavelengths; [0032]), those of the grayscale values in the region of interest (degree of shading according to the gray scale gradation; [0036]) that correspond to the wavelength ([0030]) to obtain an averaged grayscale value that corresponds to the wavelength (hologram image of the hologram reflected by light of a specific wavelength according to the degree of shading i.e., step division, level division, e.g., grayscales; [0030]); and
determining authenticity of the hologram (hologram 100-2 that is authenticated by the authenticity determination device 10-2; [0033]) based on the grayscale thresholds (authenticity discriminating apparatus 10-2 can evaluate the degree of shading according to the gray scale gradation; [0036] & gradation is set in multiple stages, for example, 32; [0031] &
grayscale conversion can clarify the density of the hologram image; [0039]) and the averaged grayscale values that correspond to the different wavelengths (light of a specific wavelength according to the degree of shading e.g., grayscales; [0030]).
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.
Any inquiry concerning this communication or earlier communications from the examiner should be directed to K MUHAMMAD whose telephone number is (571)272-4210. The examiner can normally be reached Monday - Thursday 1:00pm - 9:30pm EDT.
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If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Ricky Mack can be reached at 571-272-2333. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/K MUHAMMAD/Examiner, Art Unit 2872 04 October 2025
/SHARRIEF I BROOME/Primary Examiner, Art Unit 2872