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 .
Allowable Subject Matter
Claims 24-27 are objected to as being dependent upon a rejected base claim, but would be allowable if rewritten in independent form including all of the limitations of the base claim and any intervening claims.
The following is a statement of reasons for the indication of allowable subject matter: the aforementioned claims set forth a series of physical structures/configurations that are well beyond that which is disclosed within the Morgan reference (discussed in greater depth infra), which is the prior art closest to Applicants’ claimed invention, and there would be no obvious reason to modify Morgan to the extent necessary to satisfy each of Applicants’ pertinent limitations (specifically with regard to the claimed combinations of functional capabilities and integrated associations with external components/systems), as such modifications would be likely to render the Morgan assembly incapable of continuing to operate/behave in the particular manner set forth within the reference itself (given the particularly sensitive nature of such valuable article authenticity systems/assemblies), which would be strongly indicative of an application of improper hindsight reasoning.
Claims 25-26 would be allowable if rewritten to overcome the rejections under 35 U.S.C. 112(b) or 35 U.S.C. 112 (pre-AIA ), 2nd paragraph, set forth in this Office action and to include all of the limitations of the base claim and any intervening claims.
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 3, 21 and 25-26 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.
The claim 3 limitation of “the mark placed on the layer of the collectible” is unclear, as it is unknown which of the claim 1 “one or more layers” is being invoked. Exactly what structure/configuration is sought? Please review/revise/clarify.
The claim 21 recitation of “a light source from one or more surfaces of the collectible” is unclear, as the exact configuration to be provided is unknown. Is the claimed “light source” supposed to be part of the “one or more surfaces”? Exactly what structure/configuration is sought? Please review/revise/clarify.
The claims 25-26 recitations of “based on” are unclear, as it is unknown exactly what comparison/determination is being made as part of the “based on” evaluation. Exactly what process is sought? Please review/revise/clarify.
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 1-8, 16-23 and 28 are rejected under 35 U.S.C. 102(a)(1) as being anticipated by U.S. Patent Application Publication No. 2006/0239516 to Morgan (“Morgan”).
Regarding claim 1, Morgan anticipates an apparatus (e.g. collection of components shown in fig. 2A, together, and discussed at para. 32) for marking (e.g. producing certificate of authenticity and serialized hologram attached to object bearing authentic signature, as discussed at para. 19-20) a collectible (34, as shown in fig. 2A and discussed at para. 44), comprising: i) at least one memory (e.g. memory discussed at para. 16 and claim 9); and ii) at least one processor (e.g. processor located within central computer 42) coupled to (note that computer processors are connected to computer memory units) the at least one memory (aforementioned memory discussed at para. 16 and claim 9) and is configured to cause the apparatus (aforementioned collection of components shown in fig. 2A, together) to: a) place (fig. 2A) a mark (e.g. serialized hologram with barcode 32’, as shown in fig. 2A and discussed at para. 44) on (fig. 2A) the collectible (34) that is a unique characteristic (per para. 29, the aforementioned barcode 32’ is unique for the collectible) of the collectible (34) that authenticates (para. 6) the collectible (34) as being an original collectible (i.e. actually signed by a celebrity, artist or athlete, as discussed at para. 6) manufactured (i.e. signed, as discussed at para. 6, thus rendering/manufacturing the collectible as “authentic”) by an entity (e.g. celebrity, artist or athlete discussed at para. 6) identified as a manufacturer (note that when a celebrity, artist or athlete autographs an otherwise ordinary item, he/she can be said to “manufacture” a collectible from the aforementioned ordinary item) of the collectible (34), wherein the mark (32’) is on (fig. 2A) a layer (e.g. outer layer, as shown in fig. 2A) of the collectible (34), wherein the collectible (34) has one or more layers (e.g. leather outer layer of a baseball, and cork inner layers of said baseball).
Regarding claim 2, Morgan anticipates the apparatus of claim 1, wherein the apparatus (aforementioned collection of components shown in fig. 2A) identifies a location (para. 37) of the collectible (34) on the collectible (34) which comprises the unique characteristic (per para. 29, the aforementioned barcode 32’ is unique for the collectible) of the collectible (34).
Regarding claim 3, Morgan anticipates the apparatus of claim 1, wherein the apparatus (aforementioned collection of components shown in fig. 2A) is a component within a collectible manufacturing system (e.g. process shown in fig. 2A and discussed at para. 32) configured to manufacture the collectible (34) comprising (fig. 2A) the mark (32’) placed on (fig. 2A) the layer (aforementioned outer layer) of the collectible (34).
Regarding claim 4, Morgan anticipates the apparatus of claim 1, wherein the unique characteristic (per para. 29, the aforementioned barcode 32’ is unique for the collectible) of the collectible (34) comprises at least one of: i) a print pattern that is a different print pattern than used elsewhere on the collectible, an alpha or numeric or alphanumeric identification, a unique color red, green, blue (RGB) print that is not located elsewhere on the collectible, a font type that is not located elsewhere on the collectible, a font size that is not located elsewhere on the collectible, an object or device that emits a signal, light, color, dimension, temperature, or any unique identification characteristic that is not duplicated anywhere else on the collectible, and to identify a location of the collectible, or ii) an object (note that the aforementioned serialized hologram with bar code 32’ is an “object”) placed on (fig. 2A) one or more layers (aforementioned outer layer) or between layers of the collectible (34).
Regarding claim 5, Morgan anticipates the apparatus of claim 1, wherein the mark (32’) is placed on (fig. 2A) at least one of: i) a top or a bottom if the collectible is comprised of one layer, or ii) a layer (aforementioned outer layer) in between the top and the bottom (fig. 2A) if the collectible (34) is comprised of more than one layer (aforementioned leather outer layer of a baseball, and cork inner layers of said baseball).
Regarding claim 6, Morgan anticipates the apparatus of claim 1, wherein the mark (32’) on (fig. 2A) the collectible (34) is at least partially visible (fig. 2A) such that at least part of the mark (32’) is visible (fig. 2A), or at least partially concealed such that at least part of the mark is not visible.
Regarding claim 7, Morgan anticipates the apparatus of claim 1, wherein the mark (32’) is placed on a front surface (fig. 2A) or a rear surface of the collectible (34).
Regarding claim 8, Morgan anticipates the apparatus of claim 1, wherein the mark (32’) is placed within or on (fig. 2A) any of the one or more layers (aforementioned leather outer layer of a baseball) of the collectible (34).
Regarding claim 16, Morgan anticipates a method (para. 5) of marking (e.g. producing certificate of authenticity and serialized hologram attached to object bearing authentic signature, as discussed at para. 19-20) a collectible (34, as shown in fig. 2A and discussed at para. 44), comprising: i) placing (fig. 2A) a mark (e.g. serialized hologram with barcode 32’, as shown in fig. 2A and discussed at para. 44) on a first layer (e.g. outer layer, as shown in fig. 2A) of a plurality of layers (e.g. leather outer layer of a baseball, and cork inner layers of said baseball) of a collectible (34, as shown in fig. 2A and discussed at para. 44), wherein the mark (32’) is a unique characteristic of information (per para. 29, the aforementioned barcode 32’ is unique for the collectible) related to the collectible (34); and ii) combining (fig. 2A) the first layer (aforementioned outer layer) of the collectible (34) comprising (fig. 2A) the mark (32’) with one or more of the plurality of layers (aforementioned leather outer layer of a baseball, and cork inner layers of said baseball) of the collectible (34) to form (fig. 2A) the collectible (34).
Regarding claim 17, Morgan anticipates the method of claim 16, wherein the first layer (aforementioned outer layer) comprises at least one of a front face (fig. 2A) of the collectible (34), a rear face of the collectible, or a layer interposed between the front face and the rear face of the collectible.
Regarding claim 18, Morgan anticipates the method of claim 16, wherein the mark (32’) is on (fig. 2A) any surface (e.g. aforementioned outer layer) of the plurality of layers (aforementioned leather outer layer of a baseball, and cork inner layers of said baseball) of the collectible (34).
Regarding claim 19, Morgan anticipates the method of claim 16, wherein the unique characteristic (per para. 29, the aforementioned barcode 32’ is unique for the collectible) of the collectible (34) comprises at least one of: i) a print pattern that is a different print pattern than used elsewhere on the collectible, an alpha or numeric or alphanumeric identification, ii) a unique color red, green, blue (RGB) print that is not located elsewhere on the collectible, iii) a font type that is not located elsewhere on the collectible, iv) a font size that is not located elsewhere on the collectible, v) an object or device that emits a signal, light, color, dimension, temperature, or any unique identification characteristic (aforementioned second serialized hologram with barcode 32’) that is not duplicated anywhere else on (fig. 2A) the collectible (34), and may identify a location of the collectible, or vi) an object (32’) placed on (fig. 2A) one or more layers (aforementioned outer layer) or between layers of the collectible (34).
Regarding claim 20, Morgan anticipates the method of claim 16, wherein the mark (32’) on (fig. 2A) the collectible (34) is at least partially visible (fig. 2A) such that at least part of the mark (32’) is visible (fig. 2A), or at least partially concealed such that at least part of the mark is not visible.
Regarding claim 21, Morgan anticipates the method of claim 16, wherein presence of the mark (32’) is identified by a light source (e.g. a bar code reader/scanner) from one or more surfaces (aforementioned outer layer) of the collectible (34).
Regarding claim 22, Morgan anticipates the method of claim 16, wherein presence of the mark (32’) is identified with an image capturing device (e.g. a bar code reader/scanner), wherein the image capturing device comprises at least one of a scanner (aforementioned bar code reader/scanner), camera, or any other image capture device.
Regarding claim 23, Morgan anticipates the method of claim 16, wherein presence of the mark (32’) is identified with a detection device (e.g. a bar code reader/scanner), wherein the detection device (aforementioned bar code reader/scanner) is configured to use at least one of light (note that such bar code reader/scanner will utilize a bar of light to read the bar code 32’), sound, or electromagnetic signals to detect the mark.
Regarding claim 28, Morgan anticipates the apparatus of claim 1, wherein the mark (32’) authenticates the original collectible (34) as manufactured at a specific location (para. 37) or time by the entity (aforementioned celebrity, artist or athlete).
Response to Arguments
In response to Applicants’ argument that Morgan does not disclose “place a mark on the collectible that is a unique characteristic of the collectible that authenticates the collectible as being an original collectible manufactured by an entity identified as a manufacturer of the collectible” (Arguments/Remarks pg. 7), the Office respectfully asserts that as indicated supra, Morgan indeed teaches the content of “place (fig. 2A; note the placement of serialized hologram with barcode 32’ upon a collectible 34) a mark (e.g. serialized hologram with barcode 32’, as shown in fig. 2A and discussed at para. 44; note that this hologram/barcode element is a form of “mark”) on (fig. 2A) the collectible (e.g. 34, as shown in fig. 2A; note that such an autographed baseball may be reasonably considered to be a “collectible” object) that is a unique characteristic (per para. 29, the aforementioned barcode 32’ is unique for the collectible) of the collectible (34) that authenticates (para. 6; note that the overall system and its constituent components work together to authenticate signatures that have been scribed on collectible objects) the collectible (34) as being an original collectible (i.e. a baseball of fig. 2A that actually has been signed by a celebrity, artist or athlete, as discussed at para. 6) manufactured (i.e. signed, as discussed at para. 6, thus rendering/manufacturing the collectible as “authentic”; note that an ordinary baseball is simply a spherical ball toy, but an ordinary baseball that is signed by a MLB celebrity baseball player will be reasonably considered to be a collectible item) by an entity (e.g. celebrity, artist or athlete discussed at para. 6) identified as a manufacturer (note that when a celebrity, artist or athlete autographs an otherwise ordinary item, he/she can be said to “manufacture” a collectible from the aforementioned ordinary item) of the collectible (34)”.
Conclusion
THIS ACTION IS MADE FINAL. 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 JUSTIN V LEWIS whose telephone number is (571)270-5052. The examiner can normally be reached M-F 7:30AM-5:00PM.
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/JUSTIN V LEWIS/Primary Examiner, Art Unit 3637