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 .
Information Disclosure Statement
The information disclosure statement submitted on September 16, 2024 has been considered by the examiner and made of record in the application file.
Claim Objections
Claims 19 and 25 is objected to because of the following informalities: Please replace “gemsstone” with “gemstone” on line 7 of claim 25. Appropriate correction is required.
Claim 26 is objected to because of the following informalities: It appears that “Claim 26” should depend on “claim 24” instead of “claim 18” as “claim 18” is the method claim, not the system claim. Appropriate correction is required.
Double Patenting
The nonstatutory double patenting rejection is based on a judicially createddoctrine grounded in public policy (a policy reflected in the statute) so as to prevent theunjustified or improper timewise extension of the "right to exclude" granted by a patentand to prevent possible harassment by multiple assignees. A nonstatutoryobviousness-type double patenting rejection is appropriate where the conflicting claimsare not identical, but at least one examined application claim is not patentably distinctfrom the reference claim(s) because the examined application claim is either anticipatedby, or would have been obvious over, the reference claim(s). See, e.g., In re Berg, 140F.3d 1428, 46 USPQ2d 1226 (Fed. Cir. 1998); In re Goodman, 11 F.3d 1046, 29USPQ2d 2010 (Fed. Cir. 1993); In re Longi, 759 F.2d 887, 225 USPQ 645 (Fed. Cir.1985); In re Van Omum, 686 F.2d 937, 214 USPQ 761 (CCPA 1982); In re Vogel, 422F.2d 438, 164 USPQ 619 (CCPA 1970); and In re Thorington, 418 F.2d 528, 163USPQ 644 (CCPA 1969).
A timely filed terminal disclaimer in compliance with 37 CFR 1.321(c) or 1.321(d)may be used to overcome an actual or provisional rejection based on a nonstatutorydouble patenting ground provided the conflicting application or patent either is shown tobe commonly owned with this application, or claims an invention made as a result ofactivities undertaken within the scope of a joint research agreement.
Effective January 1, 1994, a registered attorney or agent of record may sign aterminal disclaimer. A terminal disclaimer signed by the assignee must fully comply with37 CFR 3.73(b).
Claims 18, 19, 23, 24, 25, and 29 are rejected on the ground of nonstatutory obviousness-type double patenting as being unpatentable over claims 1-6 of U.S. Patent 11,796,480 in view of Callegari et al. (US PGPUB 2013/0200143 A1, hereinafter Callegari) in view of Palmieri et al. (US PGPUB 2013/0010280 A1, hereinafter Palmieri). Although the conflicting claims are not identical, they are not patentably distinct from each other.
Please see the following table for the claim 18 analysis (and similarly applied to claim 24):
18/369,157
11,796,480
Claim Interpretation
18. A computerized method comprising,
analyzing one or more values of a gemstone, wherein the values correspond to at least
one of a size, a shape, a cut, a fluorescence or a color of the gemstone; and
storing the generated unique identification in association with the gemstone.
1. A computerized method comprising:
analyzing a plurality of gemstones from one or more particular mines/sources to obtain a plurality of unique identifications associated with the gemstones, the plurality of unique identifications corresponding to one or more values of size, shape, cut, fluorescence or color of the respective plurality of gemstones;
storing, in memory, the plurality of unique identifications;
analyzing an unknown origin gemstone to obtain an unknown origin unique identification associated with the unknown origin gemstone, the unknown origin unique identification corresponding to one or more values of size, shape, cut, fluorescence or color of the unknown origin gemstone; comparing the unknown origin unique identification to at least one of the plurality of unique identifications; calculating, based on the comparison, at least one respective matching score for the unknown origin unique identification and the at least one of the plurality of unique identifications; identifying whether the at least one matching score meets a predefined matching criterion; and determining, based on the identification, the particular mine/source associated with the unknown origin gemstone.
As can be seen with the side-by-side comparison, the present application is a broader, but obvious variant of 11,796,480. More specifically, 11,796,480 discloses the analyzing and storing steps, but fails to teach the processing and generating steps. However, in order to store unique identifications of a gemstone, one of ordinary skill in the art clearly realizes that a processing and generating step would be needed. Please see further analysis below in view of Callegari and Palmieri.
11,796,480 substantially discloses the claimed invention but fails to teach generating the unique identification associated with the gemstone.
However, Callegari teaches generating the unique identification associated with the gemstone (fig. 20, step 2020, paragraph 110, read as creating/generating an identification code based on the luminescent properties).
Therefore, it would have been obvious to one of ordinary skill in the art before the effective filing date of applicant’s claimed invention to have incorporated the teachings of Callegari into the invention of 11,796,480 in order to provide an authentication system requiring minimal or no intervention.
11,796,480 and Callegari disclose the claimed invention but fail to explicitly teach processing the one or more values of a gemstone to determine a unique identification associated with the gemstone.
However, Palmieri teaches processing the one or more values of a gemstone to determine a unique identification associated with the gemstone (paragraph 122, read as identifying gemstones properly by its optical image and physical characteristics so that the gemstone is “fingerprinted”).
Therefore, it would have been obvious to one of ordinary skill in the art before the effective filing date of applicant’s claimed invention to have incorporated the teachings of Palmieri into the invention of 11,796,480 and Callegari to provide a method and system for classifying gemstones that results in an accurate optical identification of the gemstone.
Please see the following table for the dependent claims:
18/369,157
11,796,480
Claim Interpretation
19. The computerized method according to claim 18, wherein the unique identifications associated with the gemstone is indicative of one or more classes of gemstones, the method further comprising: determining the one or more classes of the gemstones based on a plurality of unique identifications; and
determining the class of the gemstone based on a predefined matching criterion between the plurality of unique identifications and the unique identifications of the gemsstone.
2. The computerized method according to claim 1,
wherein said plurality of unique identifications associated with the gemstones are indicative of one or more classes of gemstones, the method further comprising: determining the one or more classes of the plurality of the gemstones based on the plurality of unique identifications; and determining the class of the unknown origin gemstone based on a predefined matching criterion between the plurality of unique identifications and the unknown origin unique identification.
As can be seen there is no substantial difference between the claims. This analysis is similarly applied to claim 25.
23. The computerized method according to claim 18, wherein the one or more values of size, shape, cut, fluorescence or color of the plurality of gemstones is/are captured by first one or more machines and the one or more values of size, shape, cut, fluorescence or color of an unknown origin gemstone is/are captured by second one or more machines other than the first one or more machines, the machines capturing the respective values being calibrated with respect to the environment
3. The computerized method according to claim 1, wherein the one or more values of size, shape, cut, fluorescence or color of the plurality of gemstones is/are captured by first one or more machines and the one or more values of size, shape, cut, fluorescence or color of the unknown origin gemstone is/are captured by second one or more machines other than the first one or more machines, the machines capturing the respective values being calibrated with respect to the environment.
As can be seen there is no substantial difference between the claims. This analysis is similarly applied to claim 29.
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.
The factual inquiries for establishing a background for determining obviousness under 35 U.S.C. 103 are summarized as follows:
1. Determining the scope and contents of the prior art.
2. Ascertaining the differences between the prior art and the claims at issue.
3. Resolving the level of ordinary skill in the pertinent art.
4. Considering objective evidence present in the application indicating obviousness or nonobviousness.
This application currently names joint inventors. In considering patentability of the claims the examiner presumes that the subject matter of the various claims was commonly owned as of the effective filing date of the claimed invention(s) absent any evidence to the contrary. Applicant is advised of the obligation under 37 CFR 1.56 to point out the inventor and effective filing dates of each claim that was not commonly owned as of the effective filing date of the later invention in order for the examiner to consider the applicability of 35 U.S.C. 102(b)(2)(C) for any potential 35 U.S.C. 102(a)(2) prior art against the later invention.
Claims 18, 23, 24, and 29 are rejected under 35 U.S.C. 103 as being unpatentable over Callegari et al. (US PGPUB 2013/0200143 A1, hereinafter Callegari) in view of Palmieri et al. (US PGPUB 2013/0010280 A1, hereinafter Palmieri).
Consider claim 18. Callegari discloses a computerized method (fig. 20, paragraph 110) comprising,
analyzing one or more values of a gemstone (fig. 20, step 2010, paragraph 110, read as measuring luminescence properties of one or more jewels);
generating the unique identification associated with the gemstone (fig. 20, step 2020, paragraph 110, read as creating/generating an identification code based on the luminescent properties); and
storing the generated unique identification in association with the gemstone (fig. 20, step 2025, paragraph 110, read as storing the identification code in a database).
Although Callegari discloses that one of the values correspond to luminescence (a broader term for fluorescence), Callegari does not teach wherein the values correspond to at least one of a size, a shape, a cut, a fluorescence or a color of the gemstone and processing the one or more values of a gemstone to determine a unique identification associated with the gemstone.
However, Palmieri teaches wherein the values correspond to at least one of a size, a shape, a cut, a fluorescence or a color of the gemstone and processing the one or more values of a gemstone to determine a unique identification associated with the gemstone (paragraphs 122, 130, read as identifying gemstones properly by its optical image and physical characteristics so that the gemstone is “fingerprinted”, where these characteristics include at least dimensions (size) and shape).
Therefore, it would have been obvious to one of ordinary skill in the art before the effective filing date of applicant’s claimed invention to have incorporated the teachings of Palmieri into the invention of Callegari to provide a method and system for classifying gemstones that results in an accurate optical identification of the gemstone.
Consider claim 23 and as applied to claim 18. Callegari and Palmieri disclose wherein the one or more values of size, shape, cut, fluorescence or color of the plurality of gemstones is/are captured by first one or more machines and the one or more values of size, shape, cut, fluorescence or color of an unknown origin gemstone is/are captured by second one or more machines other than the first one or more machines, the machines capturing the respective values being calibrated with respect to the environment (Palmieri; paragraphs 2, 60).
Therefore, it would have been obvious to one of ordinary skill in the art before the effective filing date of applicant’s claimed invention to have incorporated the teachings of Palmieri into the invention of Callegari to provide a method and system for classifying gemstones that results in an accurate optical identification of the gemstone.
Consider claim 24. Callegari discloses a computerized system comprising a processor (fig. 19, read as a computing device 1910 that includes a processor 1920) configured to:
analyze one or more values of a gemstone(fig. 20, step 2010, paragraph 110, read as measuring luminescence properties of one or more jewels);
generate the unique identification associated with the gemstone (fig. 20, step 2020, paragraph 110, read as creating/generating an identification code based on the luminescent properties); and
store the generated unique identification in association with the gemstone (fig. 20, step 2025, paragraph 110, read as storing the identification code in a database).
Although Callegari discloses that one of the values correspond to luminescence (a broader term for fluorescence), Callegari does not teach wherein the values correspond to at least one of a size, a shape, a cut, a fluorescence or a color of the gemstone and processing the one or more values of a gemstone to determine a unique identification associated with the gemstone.
However, Palmieri teaches wherein the values correspond to at least one of a size, a shape, a cut, a fluorescence or a color of the gemstone and processing the one or more values of a gemstone to determine a unique identification associated with the gemstone (paragraphs 122, 130, read as identifying gemstones properly by its optical image and physical characteristics so that the gemstone is “fingerprinted”, where these characteristics include at least dimensions (size) and shape).
Therefore, it would have been obvious to one of ordinary skill in the art before the effective filing date of applicant’s claimed invention to have incorporated the teachings of Palmieri into the invention of Callegari to provide a method and system for classifying gemstones that results in an accurate optical identification of the gemstone.
Consider claim 29 and as applied to claim 24. Callegari and Palmieri disclose wherein the one or more values of size, shape, cut, fluorescence or color of the plurality of gemstones is/are captured by first one or more machines and the one or more values of size, shape, cut, fluorescence or color of an unknown origin gemstone is/are captured by second one or more machines other than the first one or more machines, the machines capturing the respective values being calibrated with respect to the environment (Palmieri; paragraphs 2, 60).
Therefore, it would have been obvious to one of ordinary skill in the art before the effective filing date of applicant’s claimed invention to have incorporated the teachings of Palmieri into the invention of Callegari to provide a method and system for classifying gemstones that results in an accurate optical identification of the gemstone.
Claims 19-22 and 25-28 are rejected under 35 U.S.C. 103 as being unpatentable over Callegari et al. (US PGPUB 2013/0200143 A1, hereinafter Callegari) in view of Palmieri et al. (US PGPUB 2013/0010280 A1, hereinafter Palmieri) in view of Wagner et al. (US PGPUB 2014/0063292 A1, hereinafter Wagner).
Consider claim 19 and as applied to claim 18. Callegari and Palmieri disclose the claimed invention but fail to teach wherein the unique identifications associated with the gemstone is indicative of one or more classes of gemstones, the method further comprising: determining the one or more classes of the gemstones based on a plurality of unique identifications; and determining the class of the gemstone based on a predefined matching criterion between the plurality of unique identifications and the unique identifications of the gemsstone.
However, Wagner teaches wherein the unique identifications associated with the gemstone is indicative of one or more classes of gemstones, the method further comprising: determining the one or more classes of the gemstones based on a plurality of unique identifications; and determining the class of the gemstone based on a predefined matching criterion between the plurality of unique identifications and the unique identifications of the gemstone (paragraph 47).
Therefore, it would have been obvious to one of ordinary skill in the art before the effective filing date of applicant’s claimed invention to have incorporated the teachings of Wagner into the invention of Callegari and Palmieri in order to provide an accurate gemstone identification system that is easy to use by the general public without special skills or training.
Consider claim 20 and as applied to claim 18. Callegari and Palmieri disclose the claimed invention but fail to teach comparing the unique identification associated with the gemstone with an independently generated unique identification associated with an unknown gemstone; and identifying the unknown gemstone as being the same gemstone when the independently generated unique identification matches the unique identification, wherein the unique identification and the independently generated unique identification are generated by the equivalent techniques enabling compatibility of the unique identifications.
However, Wagner teaches comparing the unique identification associated with the gemstone with an independently generated unique identification associated with an unknown gemstone; and identifying the unknown gemstone as being the same gemstone when the independently generated unique identification matches the unique identification, wherein the unique identification and the independently generated unique identification are generated by the equivalent techniques enabling compatibility of the unique identifications (paragraphs 30, 45).
Therefore, it would have been obvious to one of ordinary skill in the art before the effective filing date of applicant’s claimed invention to have incorporated the teachings of Wagner into the invention of Callegari and Palmieri in order to provide an accurate gemstone identification system that is easy to use by the general public without special skills or training.
Consider claim 21 and as applied to claim 18. Callegari and Palmieri disclose the claimed invention but fail to teach comparing the unique identification associated with the gemstone with a class-indicative unique identification associated with a given class of gemstones; and identifying the gemstone as belonging to the given class of gemstones when the unique identification matches the class-indicative unique identification, wherein the unique identification and the class-indicative unique identification are generated by the equivalent techniques enabling compatibility of the unique identifications.
However, Wagner teaches comparing the unique identification associated with the gemstone with a class-indicative unique identification associated with a given class of gemstones; and identifying the gemstone as belonging to the given class of gemstones when the unique identification matches the class-indicative unique identification, wherein the unique identification and the class-indicative unique identification are generated by the equivalent techniques enabling compatibility of the unique identifications (paragraphs 45, 47).
Therefore, it would have been obvious to one of ordinary skill in the art before the effective filing date of applicant’s claimed invention to have incorporated the teachings of Wagner into the invention of Callegari and Palmieri in order to provide an accurate gemstone identification system that is easy to use by the general public without special skills or training.
Consider claim 22 and as applied to claim 21. Callegari, Palmieri, and Wagner disclose wherein the class-indicative unique identification corresponds to a unique identification of a reference gemstone representing the class (Wagner; paragraph 45).
Therefore, it would have been obvious to one of ordinary skill in the art before the effective filing date of applicant’s claimed invention to have incorporated the teachings of Wagner into the invention of Callegari and Palmieri in order to provide an accurate gemstone identification system that is easy to use by the general public without special skills or training.
Consider claim 25 and as applied to claim 24. Callegari and Palmieri disclose the claimed invention but fail to teach wherein the unique identifications associated with the gemstone is indicative of one or more classes of gemstones, wherein the processor is further configured to: determine the one or more classes of the gemstones based on a plurality of unique identifications; and determine the class of the gemstone based on a predefined matching criterion between the plurality of unique identifications and the unique identifications of the gemsstone.
However, Wagner teaches wherein the unique identifications associated with the gemstone is indicative of one or more classes of gemstones, wherein the processor is further configured to: determine the one or more classes of the gemstones based on a plurality of unique identifications; and determine the class of the gemstone based on a predefined matching criterion between the plurality of unique identifications and the unique identifications of the gemstone (paragraph 47).
Therefore, it would have been obvious to one of ordinary skill in the art before the effective filing date of applicant’s claimed invention to have incorporated the teachings of Wagner into the invention of Callegari and Palmieri in order to provide an accurate gemstone identification system that is easy to use by the general public without special skills or training.
Consider claim 26 and as applied to claim 24. Callegari and Palmieri disclose the claimed invention but fail to teach wherein the processor is further configured to: compare the unique identification associated with the gemstone with an independently generated unique identification associated with an unknown gemstone; and identify the unknown gemstone as being the same gemstone when the independently generated unique identification matches the unique identification, wherein the unique identification and the independently generated unique identification are generated by the equivalent techniques enabling compatibility of the unique identifications.
However, Wagner teaches the processor is further configured to: compare the unique identification associated with the gemstone with an independently generated unique identification associated with an unknown gemstone; and identify the unknown gemstone as being the same gemstone when the independently generated unique identification matches the unique identification, wherein the unique identification and the independently generated unique identification are generated by the equivalent techniques enabling compatibility of the unique identifications (paragraphs 30, 45).
Therefore, it would have been obvious to one of ordinary skill in the art before the effective filing date of applicant’s claimed invention to have incorporated the teachings of Wagner into the invention of Callegari and Palmieri in order to provide an accurate gemstone identification system that is easy to use by the general public without special skills or training.
Consider claim 27 and as applied to claim 24. Callegari and Palmieri disclose the claimed invention but fail to teach wherein the processor is further configured to: compare the unique identification associated with the gemstone with a class-indicative unique identification associated with a given class of gemstones; and identify the gemstone as belonging to the given class of gemstones when the unique identification matches the class-indicative unique identification, wherein the unique identification and the class-indicative unique identification are generated by the equivalent techniques enabling compatibility of the unique identifications.
However, Wagner teaches wherein the processor is further configured to: compare the unique identification associated with the gemstone with a class-indicative unique identification associated with a given class of gemstones; and identify the gemstone as belonging to the given class of gemstones when the unique identification matches the class-indicative unique identification, wherein the unique identification and the class-indicative unique identification are generated by the equivalent techniques enabling compatibility of the unique identifications (paragraphs 45, 47).
Therefore, it would have been obvious to one of ordinary skill in the art before the effective filing date of applicant’s claimed invention to have incorporated the teachings of Wagner into the invention of Callegari and Palmieri in order to provide an accurate gemstone identification system that is easy to use by the general public without special skills or training.
Consider claim 28 and as applied to claim 27. Callegari, Palmieri, and Wagner disclose wherein the class-indicative unique identification corresponds to a unique identification of a reference gemstone representing the class (Wagner; paragraph 45).
Therefore, it would have been obvious to one of ordinary skill in the art before the effective filing date of applicant’s claimed invention to have incorporated the teachings of Wagner into the invention of Callegari and Palmieri in order to provide an accurate gemstone identification system that is easy to use by the general public without special skills or training.
Relevant Prior Art Directed to State of Art
Regev (US PBPUB 2016/0232432 A1) is relevant prior art not applied in the rejection(s) above. Regev discloses identifying and distinguishing a plurality of gemstones, the method comprising: (a) imaging, by a microscope, a test gemstone and generating one or more images of the test gemstone; (b) creating, by the computer, a signature database of the plurality of the gemstones; (c) receiving, by the computer, the one or more images; (d) creating, by the computer, a gemstone identification module configured to process the one or more images to (i) identify a plurality of features of the test gemstone, and (ii) generate a unique signature from the plurality of the features to represent the test gemstone; and (e) creating, by the computer, a matching module configured to recognize the test gemstone in the signature database.
Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to CHRISTOPHER M BRANDT whose telephone number is (571)270-1098. The examiner can normally be reached Mon - Fri 8:00-5:00.
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, Anthony Addy can be reached at 571-272-7795. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
Information regarding the status of published or unpublished applications may be obtained from Patent Center. Unpublished application information in Patent Center is available to registered users. To file and manage patent submissions in Patent Center, visit: https://patentcenter.uspto.gov. Visit https://www.uspto.gov/patents/apply/patent-center for more information about Patent Center and https://www.uspto.gov/patents/docx for information about filing in DOCX format. For additional questions, contact the Electronic Business Center (EBC) at 866-217-9197 (toll-free). If you would like assistance from a USPTO Customer Service Representative, call 800-786-9199 (IN USA OR CANADA) or 571-272-1000.
/CHRISTOPHER M BRANDT/Primary Examiner, Art Unit 2645 November 10, 2025