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 .
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.
The USPTO “Interim Guidelines for Examination of Patent Applications for Patent Subject Matter Eligibility” (Official Gazette notice of 22 November 2005), Annex IV, reads as follows:
Descriptive material can be characterized as either “functional descriptive material” or “nonfunctional descriptive material.” In this context, “functional descriptive material” consists of data structures and computer programs which impart functionality when employed as a computer component. (The definition of “data structure” is “a physical or logical relationship among data elements, designed to support specific data manipulation functions.” The New IEEE Standard Dictionary of Electrical and Electronics Terms 308 (5th ed. 1993).) “Non functional descriptive material” includes but is not limited to music, literary works and a compilation or mere arrangement of data.
When functional descriptive material is recorded on some computer-readable medium it becomes structurally and functionally interrelated to the medium and will be statutory in most cases since use of technology permits the function of the descriptive material to be realized. Compare In re Lowry, 32 F.3d 1579, 1583-84, 32USPQ2d1031, 1035 (Fed Cir. 1994) (claim to data structure stored on a computer readable medium that increases computer efficiency held statutory) and Warmerdam, 33 F.3d at 1360-61, 31 USPQ2d at 1759 (claim to computer having a specific data structure stored in memory held statutory product-by-process claim) with Warmerdam, 33 F.3d at 1361, 31 USPQ2d at 17660 (claim to a data structure per se held nonstatutory).
In contrast, a claimed computer-readable medium encoded with a computer program is a computer element which defines structural and functional interrelationships between the computer program and the rest of the computer which permit the computer program’s functionality to be realized, and is thus statutory See Lowry, 32 F.3d at 1583-84, 32 USPQ2d at 1035.
Claims 1-6 are rejected under 35 U.S.C. 101 because the claimed invention is directed to non-statutory subject matter as follows. Claims 1-6 defines a software program embodying functional descriptive material. However, the claim does not define a computer-readable medium or memory and is thus non-statutory for that reason (i.e. “When functional descriptive material is recorded on some computer-readable medium it becomes structurally and functionally interrelated to the medium and will be statutory in most cases since use of technology permits the function of the descriptive material to be realized” –Guidelines Annex IV). That is the scope of the presently claimed software program can range from paper on which the program is written, to a program simply contemplated and memorized by a person. The examiner suggests amending the claim to embody the program on “non-transitory computer-readable medium” or equivalent in order to make the claim statutory. Any amendment to the claim should commensurate with its corresponding disclosure.
Information Disclosure Statement
The information disclosure statement filed 1/26/2024 fails to comply with 37 CFR 1.98(a)(2), which requires a legible copy of each cited foreign patent document; each non-patent literature publication or that portion which caused it to be listed; and all other information or that portion which caused it to be listed. It has been placed in the application file, but the information referred to therein has not been considered. The lined through reference was not considered.
Claim Objections
Claims 1 and 3 are objected to because of the following informalities: Claim 1 claims “I claim a software program”, where the examiner believes the applicant does not intend to claim “I claim” within the claim. Furthermore, claim 3 appears to contain clerical errors. In claim 3, line 1, the applicant claims “company’s”, where the examiner believes the applicant intends to claim “companies”. Appropriate correction is required.
Claim Rejections - 35 USC § 112
The following is a quotation of 35 U.S.C. 112(b):
(b) CONCLUSION.—The specification shall conclude with one or more claims particularly pointing out and distinctly claiming the subject matter which the inventor or a joint inventor regards as the invention.
The following is a quotation of 35 U.S.C. 112 (pre-AIA ), second paragraph:
The specification shall conclude with one or more claims particularly pointing out and distinctly claiming the subject matter which the applicant regards as his invention.
Claims 1-6 are rejected under 35 U.S.C. 112(b) or 35 U.S.C. 112 (pre-AIA ), second paragraph, as being indefinite for failing to particularly point out and distinctly claim the subject matter which the inventor or a joint inventor (or for applications subject to pre-AIA 35 U.S.C. 112, the applicant), regards as the invention.
Claim 1 recites the limitation "the software" in in line 1. There is insufficient antecedent basis for this limitation in the claim. If the applicant intends to refer to “the software program”, please keep terms consistent.
Claim 1 recites the limitation “it” in line 2. It is unclear as to what “it” is referring to.
Claim 1 recites the limitation "the logos" in line 2. There is insufficient antecedent basis for this limitation in the claim.
Claim 3 recites the limitation “the logo” in line 2. It is unclear as to which logo the applicant is referring to.
Claim 4 recites the limitation "the person" in line 1. There is insufficient antecedent basis for this limitation in the claim.
Claim 4 recites the limitation "the consumer" in line 2. There is insufficient antecedent basis for this limitation in the claim.
Claim 4 recites the limitation “the logo” in line 2. It is unclear as to which logo the applicant is referring to.
Claim 4 recites the limitation “that” in line 2. It is unclear as to what “that” is referring to.
Claim 5 recites the limitation “said user” in line 2. It is unclear as to which user the applicant is referring to, because the applicant previously claims multiple users.
Claim 5 recites the limitation “the logo” in line 2. It is unclear as to which logo the applicant is referring to.
Claim 5 recites the limitation "the brand" in line 2. There is insufficient antecedent basis for this limitation in the claim.
Claims 4 and 5 recite “can” in line 2. IT is unclear if that which follows “can” is intended to be claimed, because it only “can” happen.
Claim 1 claims “the software will use a bitmap tracing technology”. IT is unclear as to if the applicant intends to claim that the bitmap tracing technology is used, or if it will eventually happen in the future. If it happens in the future, it is unclear as to how the applicant can claim something that occurs in the future.
Claim 3 recites that all companies “would have to verify proper ownership”, but does not provide any positive recitation on how the ownership would be verified and if the ownership is actually verified.
Claim 5 recites the limitation that a user…sees a product he/ she might want”. It is unclear as to if the user wants the product or not.
Claim 6 is indefinite because the claim provides the limitation that the software program “would potentially” create a new fun way. It is unclear if the new fun way is created or not, because it only could happen. Furthermore, it is unclear that even if a new fun way to be creating, how that even occurs/ what creates the new fun way.
Claim Rejections - 35 USC § 102
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, 2, 4 and 6 are rejected under 35 U.S.C. 102(a)(1) as being unpatentable by U.S. Patent Application Publication No. 20020037097 (Hoyos et al).
Regarding claim 1, Hoyos et al discloses a software program, the program carried out by the computer of page 1, paragraph 4, that when a user scans a company’s logo (Fig. 3, “binary image”), the software will use a bitmap tracing technology by matching the bitmaps (page 2, paragraph 32, page 3, paragraph 38), then match it to the logos registered in the software program’s database (fig. 3, item 315, database is matched to fig. 3, item 314, page 10, paragraph 146), retrieving a company's information more completely, faster, and more efficiently (page 10, paragraph 146, company is matched efficiently).
Regarding claim 2, Hoyos et al discloses, the user read a company logo on a label, i.e. a coupon (fig. 3).
Regarding claim 4, Hoyos et al discloses user doesn't have to approach the person or vehicle, since Hoyos et al does not disclose a user approaching a person or vehicle, user is only approaching the scanner (fig. 1, item 112,) the consumer can simply scan the logo and pull up that company’s profile (fig. 1, item 112, pulls up profile in fig. 1, item 116, fig. 3, item 315).
Regarding claim 6, Hoyos et al discloses said software program would potentially create a new fun way for companies to compete for more aesthetically pleasing and unique logos to draw more consumers since coupons including logos draw more consumers (fig. 1).
Claim Rejections - 35 USC § 103
The following is a quotation of 35 U.S.C. 103 which forms the basis for all obviousness rejections set forth in this Office action:
A patent for a claimed invention may not be obtained, notwithstanding that the claimed invention is not identically disclosed as set forth in section 102, if the differences between the claimed invention and the prior art are such that the claimed invention as a whole would have been obvious before the effective filing date of the claimed invention to a person having ordinary skill in the art to which the claimed invention pertains. Patentability shall not be negated by the manner in which the invention was made.
Claim 3 is rejected under 35 U.S.C. 103(a) as being unpatentable over Hoyos et al in view of U.S. Patent Application Publication No. 20070022329 (Ademak et al).
Regarding claim 3, Hoyos et al discloses all of the claimed elements as set forth above and incorporated herein by reference.
Hoyos et al does not disclose expressly all company’s would have to verify proper ownership of the logo to verify that trademark laws are respected.
Ademak et al discloses all companies would have to verify proper ownership of the logo to verify that trademark laws are respected (page 7, paragraph 117).
Hoyos et al & Ademak et al are combinable because they are from the same field of endeavor, i.e. use of logos.
Before the effective filing date of the claimed invention, it would have been obvious to a person of ordinary skill in the art to verify proper ownership.
The suggestion/motivation for doing so would have been to provide a more user friendly system by following the law.
Therefore, it would have been obvious to combine the program of Hoyos et al with the need to verify ownership of the logo to obtain the invention as specified in claim
Claim 5 is rejected under 35 U.S.C. 103(a) as being unpatentable over Hoyos et al in view of U.S. Patent Application Publication No. 20130026241 (Sakahashi et al).
Regarding claim 5, Hoyos et al discloses all of the claimed elements as set forth above and incorporated herein by reference.
Hoyos et al does not disclose expressly a user is shopping and sees a product he/she might want, said user can scan the logo of the brand, using said software find the company’s other products(page 13, paragraph 147), coupons, discount codes, website, social media accounts, current social events the company is backing.
Sakahashi et al discloses a user is shopping (page 19, paragraph 220) and sees a product he/she might want, said user can scan the logo of the brand (fig. 20, item 814), using said software find the company’s other products/ other goods or content (page 13, paragraph 147), coupons, digital wallet (page 13, paragraph 147), discount codes which is provided by digital wallets (page 13, paragraph 147), website (page 17, paragraph 194), social media accounts (page 17, paragraph 185), current social events the company is backing (page 17, paragraph 185).
Hoyos et al & Sakahashi et al are combinable because they are from the same field of endeavor, i.e. scanning logos.
Before the effective filing date of the claimed invention, it would have been obvious to a person of ordinary skill in the art to allow for connection to other data.
The suggestion/motivation for doing so would have been to provide a more flexible, user-friendly software.
Therefore, it would have been obvious to combine the program of Hoyos et al with the connection of data of Sakahashi et al to obtain the invention as specified in claim 5.
Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to KATHLEEN YUAN DULANEY whose telephone number is (571)272-2902. The examiner can normally be reached M1:9am-5pm, th1:9am-1pm, fri1 9am-3pm, m2: 9am-5pm, t2:9-5 th2:9am-5pm, f2: 9am-5pm.
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/KATHLEEN Y DULANEY/ Primary Examiner, Art Unit 2666 12/2/2025