DETAILED ACTION
1. The present application, filed on or after March 16, 2013, is being examined under the first inventor to file provisions of the AIA .
2. Claims 1-19 are pending and presented for examination.
Claim Rejections - 35 USC § 101
3. 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.
4. Claims 1-19 are rejected under 35 U.S.C. 101 because the claimed invention is directed to an abstract idea without significantly more. The representative claim 1 recites:
A method of determining authenticity of a manufactured diamond (1), comprising:
generating diamond reference characteristics by a computerized certification system capturing measurements of one or more physical characteristics of the diamond during a certification phase;
linking, by the computerized certification system, the diamond reference characteristics to the diamond;
generating, by the computerized certification system, a visual code for the diamond;
writing the visual code in or on the diamond, using a beam writing system; and verifying the authenticity of the diamond by: generating diamond verification measurements by a computerized authentication system capturing measurements of the one or more physical characteristics of the diamond during an authentication phase;
capturing, in the computerized authentication system, the visual code of the diamond;
comparing, by the computerized authentication system, the diamond verification measurements and the diamond reference characteristic, using the visual code captured from the diamond; and
affirming or denying the authenticity of the diamond, by the computerized authentication system, depending on the comparing.
The claim limitations in the abstract idea have been highlighted in bold above; the remaining limitations are “additional elements”.
Under step 1 of the eligibility analysis, we determine whether the claims are to a statutory category by considering whether the claimed subject matter falls within the four statutory categories of patentable subject matter identified by 35 U.S.C. 101: process, machine, manufacture, or composition of matter. The above claims are considered to be in a statutory category (process).
Under Step 2A, Prong One, we consider whether the claim recites a judicial exception (abstract idea). In the above claim, the highlighted portion constitutes an abstract idea because, under a broadest reasonable interpretation, it recites limitation that fall into/recite abstract idea exceptions. Specifically, under the 2019 Revised Patent Subject Matter Eligibility Guidance, it falls into the grouping of subject matter that, when recited as such in a claim limitation, covers mathematical concepts (mathematical relationships, mathematical formulas or equations, mathematical calculations) and/or mental processes – concepts performed in the human mind including an observation, evaluation, judgement, and/or opinion.
Next, under Step 2A, Prong Two, we consider whether the claim that recites a judicial exception is integrated into a practical application. In this step, we evaluate whether the claim recites additional elements that integrate the exception into a practical application of that exception.
This judicial exception is not integrated into a practical application because the additional limitations in the claim are only: a computerized certification system capturing measurements of one or more physical characteristics of the diamond during a certification phase;… writing the visual code in or on the diamond, using a beam writing system. The limitation “a computerized certification system capturing measurements of one or more physical characteristics of the diamond during a certification phase” is recited at a high level of generality (i.e., gathering or collecting data using computer components and/or sensor) such that it amounts no more than mere instructions to apply the exception using a generic computer components and/or generic sensors.
The limitation “writing the visual code in or on the diamond, using a beam writing system” is recited at a high level of generality (i.e., writing a code using a computer system including beam) such that it amounts no more than mere instructions to apply the exception using a generic writing system.
Finally, under Step 2B, we consider whether the additional elements are sufficient to amount to significantly more than the abstract idea.
Claim 1 does not include additional elements that are sufficient to amount to significantly more than the judicial exception because, as noted above, the additional elements are recited at a high level of generality (i.e., as a gathering or collecting data using computer/computing components and/or generic sensor). Further, the additional elements are conventional in the art, as evidenced by the art of record (see, Kaplan et al. US 7655882 (hereinafter, Kaplan), (Abstract, column 17, lines 58-67, Fig. 14), and Hakim US 20220376896 (hereinafter, Hakim), ([0126], [0132]). Therefore, claim 1 is directed to an abstract idea without significantly more.
The claim is not patent eligible.
Dependent claims 2-7, 12, 14-15, 17, and 19 add further details of the identified abstract idea. The claims are not patent eligible.
Dependent claim 8, recites additional element of “generating markings in or on the diamond, using a beam writing system”. However, this limitation is recited at a high level of generality (i.e., writing a code using a computer system including beam) such that it amounts no more than mere instructions to apply the exception using a generic writing system. Further, the additional element is conventional in the art, as evidenced by the art of record (see, Kaplan, Fig. 14), and Hakim ([0126]). Therefore, claim 8 is directed to an abstract idea without significantly more. The claim is not patent eligible.
Dependent claim 9, recites additional elements of “wherein generating markings in or on the diamond comprises at least one of: varying an energy level of the beam writing system, varying a degree of overlap of pulses of the beam writing system, varying a projection direction of the beam writing system, or varying a focal position of the beam writing system”. However, these limitations are recited at a high level of generality (i.e., writing a code using a computer system including beam) such that they amount no more than mere instructions to apply the exception using a generic writing system. Further, the additional element is conventional in the art, as evidenced by the art of record (see, Kaplan, Fig. 14), and Hakim ([0126]). Therefore, claim 9 is directed to an abstract idea without significantly more. The claim is not patent eligible.
Dependent claim 10, recites additional elements of “generating markings on the diamond, using at least one of: potassium nitrate, plasma etching in combination with masking materials, gas phase etching in dry oxygen, gas phase etching in a mixture of oxygen and water vapor, or liquid etching in molten potassium nitrate”. However, these limitations are recited at a high level of generality (i.e., writing a code using a computer system including masking materials) such that they amount no more than mere instructions to apply the exception using a generic writing computer system including generic masking materials. Further, the additional element is conventional in the art, as evidenced by the art of record (see, Kaplan, Fig. 14), and Hakim ([0126]). Therefore, claim 10 is directed to an abstract idea without significantly more. The claim is not patent eligible.
Dependent claim 11, recites additional elements of “wherein measuring the one or more physical characteristics of the diamond comprises at least one of: measuring a weight of the diamond, measuring a three-dimensional geometric shape of the diamond, measuring a color spectrum of the diamond, measuring a chemical composition of the diamond, measuring markings in or on the diamond, measuring inclusions in the diamond, or measuring a hologram in the diamond”. However, these limitations are recited at a high level of generality (i.e., gathering or collecting data using sensor and/or computer components) such that they amount no more than mere instructions to apply the exception using a generic sensor and/or computer components. Further, the additional element is conventional in the art, as evidenced by the art of record (see, Kaplan, column 17, lines 58-67), and Hakim ([0132]). Therefore, claim 11 is directed to an abstract idea without significantly more. The claim is not patent eligible.
Dependent claim 13, recites additional element of “wherein generating the visual code comprises generating a QR-code, and writing the visual code in or on the diamond comprises writing the QR-code in or on the diamond using the beam writing system”. However, this limitation is recited at a high level of generality (i.e., writing a code using a computer system including beam) such that it amounts no more than mere instructions to apply the exception using a generic writing system. Further, the additional element is conventional in the art, as evidenced by the art of record (see, Kaplan, Fig. 14), and Hakim ([0126]). Therefore, claim 13 is directed to an abstract idea without significantly more. The claim is not patent eligible.
Independent claim 16, recites the limitations “a processing unit and a sensor system connected to the processing unit, wherein the processing unit is configured to: capture one or more physical characteristics of the diamond measured by the sensor system during an authentication phase, generate diamond verification measurements using the one or more physical characteristics of the diamond measured during the authentication phase, capture the visual code of the diamond, use the visual code captured from the diamond for comparing the diamond verification measurements and diamond reference characteristic, generated by a computerized certification system from one or more physical characteristics of the diamond during a certification phase, and affirm or deny the authenticity of the diamond depending on the comparing.”
Under Step 2A, Prong One, we consider whether the claim recites a judicial exception (abstract idea). In the above claim, the highlighted portion constitutes an abstract idea because, under a broadest reasonable interpretation, it recites limitation that fall into/recite abstract idea exceptions. Specifically, under the 2019 Revised Patent Subject Matter Eligibility Guidance, it falls into the grouping of subject matter that, when recited as such in a claim limitation, covers mathematical concepts (mathematical relationships, mathematical formulas or equations, mathematical calculations) and/or mental processes – concepts performed in the human mind including an observation, evaluation, judgement, and/or opinion.
Next, under Step 2A, Prong Two, we consider whether the claim that recites a judicial exception is integrated into a practical application. In this step, we evaluate whether the claim recites additional elements that integrate the exception into a practical application of that exception.
This judicial exception is not integrated into a practical application because the additional limitations in the claim are only: a processing unit and a sensor system connected to the processing unit, wherein the processing unit is configured to: capture one or more physical characteristics of the diamond measured by the sensor system. The limitation “a processing unit and a sensor system connected to the processing unit” is recited at a high level of generality (i.e., as a computer structures performing a generic computer function of acquiring information) such that it amounts no more than mere instructions to apply the exception using a generic computer components.
Further, the claim limitation “capture one or more physical characteristics of the diamond measured by the sensor system”, is recited at a high level of generality (i.e., gathering data using a sensor) such that it amounts no more than mere instructions to apply the exception using a generic sensor.
Finally, under Step 2B, we consider whether the additional elements are sufficient to amount to significantly more than the abstract idea.
Claim 16 does not include additional elements that are sufficient to amount to significantly more than the judicial exception because, as noted above, the additional limitations recited at a high level of generality (i.e., gathering or collecting data using a generic sensor and a generic computer function of acquiring information). Further, the additional elements are conventional in the art, as evidenced by the art of record (see, Kaplan, Abstract, column 17, lines 58-67, Fig. 1), and Hakim ([0132], Fig. 1). Therefore, claim 16 is directed to an abstract idea without significantly more. The claim is not patent eligible.
Independent claim 18, the claim is rejected with the same rationale as in claim 16 as explained above.
Claim Objection
5. Claim 12 is objected to because of the following informalities: Claim 12 is recites “wherein generating the verification measurements….” should read “ wherein generating the diamond verification measurements….” for clarity purpose. Appropriate correction is required.
Drawings
6. The drawings of Figures 2-6 are objected to under 37 CFR 1.83 (a) and 1.84(n) and (o) because Figures 2-6 show features specified in Applicant’s disclosure and claims are not illustrated with “label representation” corresponding to elements of the drawing thereby the elements/features of the respective Fig. 2-6 are not readily identifiable, for example Fig. 2, block 21 should include few words such as “sensor”, etc…
Any element/structural detail that is essential for a proper understanding of drawing should be indicated with corresponding labels/legends and they should contain as few words as possible. Any structural detail that is essential for a proper understanding of the disclosed invention should be shown in the drawing. MPEP § 608.02(d).
Corrected drawing sheets in compliance with 37 CFR 1.121(d) are required in reply to the Office action to avoid abandonment of the application. Any amended replacement drawing sheet should include all of the figures appearing on the immediate prior version of the sheet, even if only one figure is being amended. The figure or figure number of an amended drawing should not be labeled as “amended.” If a drawing figure is to be canceled, the appropriate figure must be removed from the replacement sheet, and where necessary, the remaining figures must be renumbered and appropriate changes made to the brief description of the several views of the drawings for consistency. Additional replacement sheets may be necessary to show the renumbering of the remaining figures. Each drawing sheet submitted after the filing date of an application must be labeled in the top margin as either “Replacement Sheet” or “New Sheet” pursuant to 37 CFR 1.121(d). If the changes are not accepted by the examiner, the applicant will be notified and informed of any required corrective action in the next Office action. The objection to the drawings will not be held in abeyance.
Claim Rejections - 35 USC § 103
7. In the event the determination of the status of the application as subject to AlA 35 U.S.C. 102 and 103 (or as subject to pre-AlA 35 U.S.C. 102 and 103) is incorrect, any correction of the statutory basis 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 of this title, 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.
8. Claims 1, 2, 4-9, 11-13, and 16-19 are rejected under 35 U.S.C. 103 as being unpatentable over Kaplan et al. US 7655882 (hereinafter, Kaplan), in view of Hakim US 20220376896 (hereinafter, Hakim).
9. Regarding claim 1, Kaplan discloses a method of determining authenticity of a diamond (Abstract, Fig. 1, item 11), comprising:
generating diamond reference characteristics by a computerized certification system capturing measurements of one or more physical characteristics of the diamond during a certification phase (column 17, lines 58-62, column 25, lines 29-52: The characteristics of the workpiece may be determined… by a sensor 147 of
appropriate type. For example, dimensions, weight, optical transmission characteristics, facet angles and the like may be measured. See also column 4, lines 4-10);
generating, by the computerized certification system, a visual code for the diamond (column 4, lines 1-4, Figs. 11-12: in many instances, it is desired that each inscribed workpiece be separately identifiable. This may be by way of a unique marking on the stone or a unique combination of the marking);
writing the visual code in or on the diamond, using a beam writing system (Abstract, column 16, lines 40-52: laser micro-inscriptions); and
verifying the authenticity of the diamond by:
generating diamond verification measurements by a computerized authentication system capturing measurements of the one or more physical characteristics of the diamond during an authentication phase (Abstract, column 4, lines 1-4, column 25, lines 29-52);
capturing, in the computerized authentication system, the visual code of the diamond (column 7, lines 22-37, column 25, lines 29-52);
comparing, by the computerized authentication system, the diamond verification measurements and the diamond reference characteristic, using the visual code captured from the diamond (Abstract, Fig. 12); and
affirming or denying the authenticity of the diamond, by the computerized authentication system, depending on the comparing (Abstract, column 7, lines 34-37, column 25, lines 47-52).
Kaplan does not disclose:
manufactured diamond, and linking, by the computerized certification system, the diamond reference characteristics to the diamond.
However, Hakim discloses:
manufactured diamond([0117], [0121]), and
linking, by the computerized certification system, the diamond reference characteristics to the diamond ([0083], [0099], [0127]).
Therefore, it would have been obvious to a person of ordinary skill in the art before the effective filing date of the claimed invention to modify the system of Kaplan to use manufactured diamond, and linking, by the computerized certification system, the diamond reference characteristics to the diamond as taught by Hakim. The motivation for doing so would have been in order to enhance and secure information associated with a diamond (Hakim, [0083], [0113]).
10. Regarding claim 2, Kaplan in view of Hakim disclose the method of claim 1, wherein linking the diamond reference characteristics to the diamond comprises the computerized certification system as disclosed above.
Kaplan discloses generating the diamond reference characteristics, generating the visual code for the diamond comprises the computerized certification system; wherein verifying the authenticity of the diamond comprises the computerized certification system; wherein comparing the diamond verification measurements and the diamond reference characteristic comprises the computerized certification system (Abstract, Figs. 11-12).
Kaplan further discloses information stored in the database or marked on the stone may be encrypted using a secure encryption method by means of an encryption processor 157, reducing the risk of fraud. Further, the marking may be, in part, self-authenticating by including identification of characteristics of the marked workpiece (column 18, lines 1-10, Figs. 11-12).
Kaplan does not disclose:
generating a hash of the diamond reference characteristics by applying a cryptographic hash function; wherein generating the visual code for the diamond comprises the computerized certification system using the hash of the diamond reference characteristics; generating a hash of the diamond verification measurements by applying the cryptographic hash function; comparing the hash of the diamond verification measurements with the hash of the diamond reference characteristic.
However, Hakim discloses:
generating a hash of the diamond reference characteristics by applying a cryptographic hash function; wherein generating the visual code for the diamond comprises the computerized certification system using the hash of the diamond reference characteristics ([0083], [0099], [0127], Fig. 7);
generating a hash of the diamond verification measurements by applying the cryptographic hash function ([0083], [0096]- [0099], [0127], Fig. 7);
the hash of the diamond verification measurements [and] the hash of the diamond reference characteristic ([0083], [0086], [0127]: a “hash” may refer to an output of a cryptographic function used in securing information in a blockchain…a cryptographic process to ensure data security and/or uniformity). Kaplan discloses comparing, by the computerized authentication system, the diamond verification measurements and the diamond reference characteristic as disclosed above. Hakim discloses applying a cryptographic hash function to the diamond reference characteristics and diamond verification measurement as disclosed above. Kaplan in view of Hakim does not disclose comparing the hash of the diamond verification measurements with the hash of the diamond reference characteristic. However, comparing the hash of the diamond verification measurements with the hash of the diamond reference characteristic would have been obvious to one ordinary skill in the art based on the teaching of Kaplan and Hakim as disclosed above.
Therefore, it would have been obvious to a person of ordinary skill in the art before the effective filing date of the claimed invention to modify the system of Kaplan to use generating a hash of the diamond reference characteristics by applying a cryptographic hash function; wherein generating the visual code for the diamond comprises the computerized certification system using the hash of the diamond reference characteristics; generating a hash of the diamond verification measurements by applying the cryptographic hash function; comparing the hash of the diamond verification measurements with the hash of the diamond reference characteristic as taught by Hakim. The motivation for doing so would have been in order to enhance and secure information associated with a diamond (Hakim, [0083], [0113]).
11. Regarding claim 4, Kaplan in view of Hakim disclose the method of claim 1, as disclosed above.
Kaplan discloses storing, by the computerized certification system, the diamond reference characteristics assigned to a unique diamond identifier in a data storage system, wherein the unique diamond identifier is included in the visual code (column 4, lines 1-10, column 25, 29-43);
determining, by the computerized authentication system, the diamond identifier from the visual code (column 4, lines 1-10, column 25, 29-43); and
comparing, by the computerized authentication system, the diamond verification measurements to at least some of the diamond reference characteristics, stored and assigned in the data storage system to the diamond identifier (column 25, 29-52, Fig. 12).
12. Regarding claim 5, Kaplan in view of Hakim disclose the method of claim 4, as disclosed above.
Kaplan discloses wherein comparing the diamond verification measurements with the diamond reference characteristics comprises at least one of: retrieving at least some of the diamond reference characteristics via a network from the data storage system, or transmitting at least some of the diamond verification measurements and the diamond identifier via the network to a verification server (column 25, 29-52, Fig. 12).
13. Regarding claim 6, Kaplan in view of Hakim disclose the method of claim 5, as disclosed above.
Kaplan discloses wherein generating the visual code comprises including in the visual code information and wherein comparing the diamond verification measurements with the diamond reference characteristics comprises using the information included in the visual code for at least one of: retrieving at least some of the diamond reference characteristics from the data storage system or transmitting at least some of the diamond verification measurements and the diamond identifier to the verification server (column 4, lines 1-10, column 25, lines 29-67).
Kaplan does not disclose:
wherein generating the visual code comprises including in the visual code addressing information of at least one of: the data storage system or the verification server, wherein using the addressing information included in the visual code for at least one of: retrieving at least some of the diamond reference characteristics from the data storage system or transmitting at least some of the diamond verification measurements and the diamond identifier to the verification server.
However, Hakim discloses:
wherein generating the visual code comprises including in the visual code addressing information of at least one of: the data storage system or the verification server ([0099], [0116], [0119]); wherein using the addressing information included in the visual code for at least one of: retrieving at least some of the diamond reference characteristics from the data storage system or transmitting at least some of the diamond verification measurements and the diamond identifier to the verification server ([0099], [0116], [0119], [0147]).
Therefore, it would have been obvious to a person of ordinary skill in the art before the effective filing date of the claimed invention to modify the system of Kaplan to use wherein generating the visual code comprises including in the visual code addressing information of at least one of: the data storage system or the verification server, wherein using the addressing information included in the visual code for at least one of: retrieving at least some of the diamond reference characteristics from the data storage system or transmitting at least some of the diamond verification measurements and the diamond identifier to the verification server as taught by Hakim. The motivation for doing so would have been in order to enhance and secure information associated with a diamond (Hakim, [0083], [0113]).
14. Regarding claim 7, Kaplan in view of Hakim disclose the method of claim 2, as disclosed above.
Kaplan discloses storing, by the computerized certification system, the diamond reference characteristics in a data storage system; and comparing, by the computerized authentication system, the diamond verification measurements with the diamond reference characteristics stored in the data storage system (Abstract,
(column 25, lines 29-52, Fig. 12).
Kaplan does not disclose:
storing the hash of the diamond reference characteristics in a Blockchain data storage system; and comparing the hash of the diamond verification measurements with the hash of the diamond reference characteristics stored in the Blockchain data storage system.
However, Hakim discloses:
storing the hash of the diamond reference characteristics in a Blockchain data storage system ([0099]); and
the hash of the diamond verification measurements [and] the hash of the diamond reference characteristics stored in the Blockchain data storage system ([0083], [0099]: a “hash” may refer to an output of a cryptographic function used in securing information in a blockchain… jewelry may be sold to customers. The jewelry may be unique in that it is one of a kind or at least one of a limited number of jewelries having a particular design or designed by a particular jeweler. To add value or make the piece of jewelry more desirable, in some embodiments, an NFT may be created that stores a digital design of the jewelry on a block of a blockchain. The NFT's information may be etched internally on a gemstone and the gemstone may be provided to the customer that bought the piece of jewelry. The NFT information may include an address of where the NFT is located on the blockchain and may include a public key and a private key to verify ownership and the transaction that occurred when the customer bought the jewelry….Thus, the information included with the gemstones may be preserved for thousands of years. The gemstone may be referred to as a tangible token and/or a single integrated transparent gemstone herein). Kaplan discloses comparing, by the computerized authentication system, the diamond verification measurements with the diamond reference characteristics stored in the data storage system as disclosed above. Hakim discloses storing the hash of the diamond reference characteristics in a Blockchain data storage system as disclosed above. Kaplan in view of Hakim does not disclose comparing the hash of the diamond verification measurements with the hash of the diamond reference characteristics stored in the Blockchain data storage system. However, comparing the hash of the diamond verification measurements with the hash of the diamond reference characteristics stored in the Blockchain data storage system would have been obvious to one ordinary skill in the art based on the teaching of Kaplan and Hakim as disclosed above.
Therefore, it would have been obvious to a person of ordinary skill in the art before the effective filing date of the claimed invention to modify the system of Kaplan to use storing the hash of the diamond reference characteristics in a Blockchain data storage system; and comparing the hash of the diamond verification measurements with the hash of the diamond reference characteristics stored in the Blockchain data storage system as taught by Hakim. The motivation for doing so would have been in order to enhance and secure information associated with a diamond (Hakim, [0083], [0113]).
15. Regarding claim 8, Kaplan in view of Hakim disclose the method of claim 1, as disclosed above.
Kaplan discloses generating markings in or on the diamond, using a beam writing system (Abstract, column 16, lines 40-52: laser micro-inscriptions)
16. Regarding claim 9, Kaplan in view of Hakim disclose the method of claim 8, as disclosed above.
Kaplan discloses wherein generating markings in or on the diamond comprises at least one of: varying an energy level of the beam writing system, varying a degree of overlap of pulses of the beam writing system, varying a projection direction of the beam writing system, or varying a focal position of the beam writing system (column 15, lines 29-40, column 16, lines 40-52: as shown in FIG. 1, a Nd:YLF 2.sup.nd harmonic laser 1 (QD321) is provided, which emits a beam 2 having about 525 nm wavelength. A 1047 nm filter 3 is provided to attenuate any residual fundamental laser output energy, to produce a filtered laser beam 4. The filtered beam is then expanded in a ten-times beam expander 5 to reduce energy density. In the path of the expanded beam 6, a 780 nm filter 7 is provided to eliminate energy from the diode pumps).
17. Regarding claim 11, Kaplan in view of Hakim disclose the method of claim 1, as disclosed above.
Kaplan discloses wherein measuring the one or more physical characteristics of the diamond comprises at least one of: measuring a weight of the diamond, measuring a three-dimensional geometric shape of the diamond, measuring a color spectrum of the diamond, measuring a chemical composition of the diamond, measuring markings in or on the diamond, measuring inclusions in the diamond, or measuring a hologram in the diamond (column 4, lines 1-6: identify characteristics of the workpiece, such as weight).
18. Regarding claim 12, Kaplan in view of Hakim disclose the method of claim 1, as disclosed above.
Kaplan discloses wherein generating the diamond reference characteristics comprises including, by the computerized certification system, a secret diamond code in the diamond reference characteristics (column 25, lines 29-67, Fig. 12),
wherein generating the verification measurements comprises receiving, the computerized authentication system, the secret diamond code from a user and including the secret diamond code received from the user in the diamond verification measurements (column 17, lines 6-16, column 22, lines 41-53, Fig. 12).
19. Regarding claim 13, Kaplan in view of Hakim disclose the method of claim 1, as disclosed above.
Kaplan discloses wherein generating the visual code comprises generating a code, and writing the visual code in or on the diamond comprises writing the code in or on the diamond using the beam writing system (column 25, lines 38-67, Fig. 12). Further, Hakim discloses generating a QR-code ([0131]).
20. Regarding claim 16, Kaplan discloses a computerized authentication system for verifying authenticity of a diamond, the diamond comprising a visual code, the computerized authentication system comprising a processing unit and a sensor system connected to the processing unit (Abstract, column 17, lines 38-63), comprising:
wherein the processing unit is configured to: capture one or more physical characteristics of the diamond measured by the sensor system during an authentication phase (column 17, lines 58-62, Fig. 12: The characteristics of the workpiece may be determined… by a sensor 147 of
appropriate type. For example, dimensions, weight, optical transmission characteristics, facet angles and the like may be measured. See also column 4, lines 4-10);
generate diamond verification measurements using the one or more physical characteristics of the diamond measured during the authentication phase (Abstract, column 4, lines 1-4, column 25, lines 29-52);
capture the visual code of the diamond (column 4, lines 1-4, column 7, lines 22-37, column 25, lines 29-52);
use the visual code captured from the diamond for comparing the diamond verification measurements and diamond reference characteristic, generated by a computerized certification system from one or more physical characteristics of the diamond during a certification phase (Abstract, column 25, lines 29-52, Fig. 12); and
affirm or deny the authenticity of the diamond depending on the comparing (Abstract, column 7, lines 34-37, column 25, lines 47-52).
Kaplan does not disclose:
manufactured diamond.
However, Hakim discloses:
manufactured diamond ([0117], [0121]).
Therefore, it would have been obvious to a person of ordinary skill in the art before the effective filing date of the claimed invention to modify the system of Kaplan to use manufactured diamond as taught by Hakim. The motivation for doing so would have been in order to determine the authenticity of a manufacture diamond (Hakim, [0096], [0117]).
21. Regarding claim 18, the claim is rejected with the same rationale as in claim 16.
22. Regarding claim 17, Kaplan in view of Hakim disclose the computerized authentication system of claim 16 as disclosed above.
Kaplan discloses wherein the processing unit is further configured to generate the diamond verification measurements by applying [an encryption] to the diamond verification measurements, and to compare the diamond verification measurements and the diamond reference characteristic by using the visual code captured from the diamond, generated by the computerized certification system from the one or more physical characteristics of the diamond during the certification phase (column 4, lines 1-10, column 25, lines 29-52, Figs. 11-12).
Kaplan does not disclose:
generate a hash of the diamond verification measurements by applying a cryptographic hash function to the diamond verification measurements, and to compare the hash of the diamond verification measurements with a hash of diamond reference characteristic.
However, Hakim discloses:
generate a hash of the diamond verification measurements by applying a cryptographic hash function to the diamond verification measurements ([0083], [0099], [0127], Fig. 7);
the hash of the diamond verification measurements [and] the hash of the diamond reference characteristic ([0083], [0086], [0127]: a “hash” may refer to an output of a cryptographic function used in securing information in a blockchain…a cryptographic process to ensure data security and/or uniformity). Kaplan discloses comparing, by the computerized authentication system, the diamond verification measurements and the diamond reference characteristic as disclosed above. Hakim discloses applying a cryptographic hash function to the diamond reference characteristics and diamond verification measurement as disclosed above. Kaplan in view of Hakim does not disclose compare the hash of the diamond verification measurements with a hash of diamond reference characteristic. However, comparing the hash of the diamond verification measurements with a hash of diamond reference characteristic would have been obvious to one ordinary skill in the art based on the teaching of Kaplan and Hakim as disclosed above.
Therefore, it would have been obvious to a person of ordinary skill in the art before the effective filing date of the claimed invention to modify the system of Kaplan to use generate a hash of the diamond verification measurements by applying a cryptographic hash function to the diamond verification measurements, and to compare the hash of the diamond verification measurements with a hash of diamond reference characteristic as taught by Hakim. The motivation for doing so would have been in order to enhance and secure information associated with a diamond (Hakim, [0083], [0113]).
23. Regarding claim 19, the claim is rejected with the same rationale as in claim 17.
24. Claim 3 is rejected under 35 U.S.C. 103 as being unpatentable over Kaplan, in view of Hakim, in further view of Lawlis et. al., US 2018/0027600 (hereinafter, Lawlis).
25. Regarding claim 3, Kaplan in view of Hakim disclose the method of claim 2, as disclosed above.
Kaplan further discloses wherein generating the diamond reference characteristics; and generating the diamond verification measurements (column 25, lines 29-52, Fig. 12).
Kaplan in view of Hakim does not disclose:
rounding of the reference characteristics, prior to applying the cryptographic hash function; wherein rounding of the verification measurements, prior to applying the cryptographic hash function.
However, Lawlis discloses:
rounding of the reference characteristics, prior to applying the cryptographic hash function; wherein rounding of the verification measurements, prior to applying the cryptographic hash function ([0020], [0034]: the encryption controller 114 rounds (e.g., to the next multiple of five, etc.) the measurable attribute before using the hash function).
Therefore, it would have been obvious to a person of ordinary skill in the art before the effective filing date of the claimed invention to modify the system of Kaplan in view of Hakim to use rounding of the reference characteristics, prior to applying the cryptographic hash function; wherein rounding of the verification measurements, prior to applying the cryptographic hash function as taught by Lawlis. The motivation for doing so would have been in order to apply the rounding methodology of the hash function of a vehicle communication system as known in the art and as taught by Lawlis in a diamond authentication system of such as that of Kaplan and Hakim, thereby, generating and processing data related with diamond authentication efficiently (Lawlis, [0020]).
26. Claim 10 is rejected under 35 U.S.C. 103 as being unpatentable over Kaplan, in view of Hakim, in further view of Yoshiki et. al., JP 3651025 B2 (hereinafter, Yoshiki).
27. Regarding claim 10, Kaplan in view of Hakim disclose the method of claim 8, as disclosed above.
Kaplan in view of Hakim does not disclose:
generating markings on the diamond, using at least one of: potassium nitrate, plasma etching in combination with masking materials, gas phase etching in dry oxygen, gas phase etching in a mixture of oxygen and water vapor, or liquid etching in molten potassium nitrate.
However, Yoshiki discloses:
generating markings on the diamond, using at least one of: potassium nitrate, plasma etching in combination with masking materials, gas phase etching in dry oxygen, gas phase etching in a mixture of oxygen and water vapor, or liquid etching in molten potassium nitrate ([0007], [0011]).
Therefore, it would have been obvious to a person of ordinary skill in the art before the effective filing date of the claimed invention to modify the system of Kaplan in view of Hakim to use generating markings on the diamond, using at least one of: potassium nitrate, plasma etching in combination with masking materials, gas phase etching in dry oxygen, gas phase etching in a mixture of oxygen and water vapor, or liquid etching in molten potassium nitrate as taught by Yoshiki. The motivation for doing so would have been in order to generate a mark on the diamond efficiently (Yoshiki, [0006]).
28. Claims 14 and 15 are rejected under 35 U.S.C. 103 as being unpatentable over Kaplan, in view of Hakim, in further view of Gaathon et, al. US 2022/0242160 (hereinafter, Gaathon).
29. Regarding claim 14, Kaplan in view of Hakim disclose the method of claim 1, as disclosed above.
Kaplan further discloses wherein affirming the authenticity of the diamond comprises generating an authentication message, the authentication message including a digital signature (column 7, lines 34-37, column 9, lines 3-23, 60-69, Fig. 12).
Kaplan in view of Hakim does not disclose:
wherein the authentication message including a digital signature, which is verifiable by a trusted third party.
However, Gaathon discloses:
wherein the authentication message including a digital signature, which is verifiable by a trusted third party ([0049], [0117], [0119], [0174]).
Therefore, it would have been obvious to a person of ordinary skill in the art before the effective filing date of the claimed invention to modify the system of Kaplan in view of Hakim to use wherein the authentication message including a digital signature, which is verifiable by a trusted third party as taught by Gaathon. The motivation for doing so would have been in order to verify the authenticity of the diamond from different entity (Gaathon, [0117]-[0119]).
30. Regarding claim 15, Kaplan in view of Hakim in view of Gaathon disclose the method of claim 14, as disclosed above.
Kaplan further discloses generating the visual code comprises including in the visual code addressing information of the trusted third part (column 25, lines 29-67).
Kaplan in view of Hakim does not disclose:
wherein generating the visual code comprises including in the visual code addressing information of the trusted third part.
However, Gaathon discloses:
“The object identifier can be, for example, an identity or identifier for a person or other entity (e.g., …address,) associated with the object” ([0117], [0119], [0168]).
Therefore, it would have been obvious to a person of ordinary skill in the art before the effective filing date of the claimed invention to modify the system of Kaplan in view of Hakim to use wherein generating the visual code comprises including in the visual code addressing information of the trusted third part as taught by Gaathon. The motivation for doing so would have been in order to verify the authenticity of the diamond from different entity (Gaathon, [0117]-[0119]).
Conclusion
31. Examiner has cited particular columns and line numbers, and/or paragraphs, and/or pages in the references applied to the claims above for the convenience of the applicant. Although the specified citations are representative of the teachings of the art and are applied to specific limitations within the individual claim, other passages and figures may apply as well. It is respectfully requested from the applicant in preparing responses, to fully consider the references in entirety as potentially teaching all or part of the claimed invention, as well as the context of the passage as taught by the prior art or disclosed by the Examiner. In the case of amending the claimed invention, Applicant is respectfully requested to indicate the portion(s) of the specification which dictate(s) the structure relied on for proper interpretation and also to verify and ascertain the metes and bounds of the claimed invention.
32. Any inquiry concerning this communication or earlier communications from the examiner should be directed to EYOB HAGOS whose telephone number is (571)272-3508. The examiner can normally be reached on 8:30-5:30PM.
If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor Shelby Turner can be reached on 571-272-6334. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/Eyob Hagos/
Primary Examiner, Art Unit 2857
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