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 .
Continued Examination Under 37 CFR 1.114
A request for continued examination under 37 CFR 1.114, including the fee set forth in 37 CFR 1.17(e), was filed in this application after final rejection. Since this application is eligible for continued examination under 37 CFR 1.114, and the fee set forth in 37 CFR 1.17(e) has been timely paid, the finality of the previous Office action has been withdrawn pursuant to 37 CFR 1.114. Applicant's submission filed on 5 December 2025 has been entered.
Response to Arguments
Applicant’s arguments with respect to claims 1-19 have been considered but are moot because the new ground of rejection does not rely on any reference applied in the prior rejection of record for any teaching or matter specifically challenged in the argument.
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.
Claims 1-4, 6-10, and 12-19 are rejected under 35 U.S.C. 103 as being unpatentable over Engels et al. (US 2015/0134552) in view of Fileccia (US 2023/0147221).
In regard to claim 1, Engels disclosed a system for product authentication comprising:
a scanning device (Engels [0045], tagging device 112) configured to scan a radio frequency (RF) device (Engels [0045], tagged item 111 with an RFID tag) to receive from said RF device a responsive encrypted message generated using a unique identifier (Engels [0048], serial number), …, and an encryption key (Engels [0048], cryptographic key 115), and transmit to a verification server (Engels [0054], authentication system 170) the encrypted message to receive from the verification server an authenticity and/or ownership status of a product embedded with the RF device (Engles [0055], [0058]), wherein:
an RF device embedded in a product (Engles [0050]) is encoded with a unique identifier (Engels [0053]), …, and an encryption key (Engels [0048]); and
a verification server is provided thereto being configured to:
generate and/or store encryption keys and associated decryption keys; Engels [0065]
maintain a database associating unique identifiers with products …; Engels [0064]
receive encrypted messages from the scanning device and decrypt using the decryption keys; Engels [0065] and
… to prevent replay attacks; (“to prevent replay attacks” is intended use. A recitation of the intended use of the claimed invention must result in a structural difference between the claimed invention and the prior art in order to patentably distinguish the claimed invention from the prior art. If the prior art structure is capable of performing the intended use, then it meets the claim.) and
transmit authenticity and/or ownership status data of scanned products based on the decrypted messages … (Engels [0062]).
Engels failed to disclose a scan count, … a counter algorithm configured to increment a scan count upon each successful authentication attempt, … storing a corresponding expected counter value for each unique identifier, … determin[ing] the authenticity of the product by comparing a decrypted counter value from the RF device with the corresponding expected counter value stored in the database to prevent replay attacks, … and transmitting authenticity of scanned products…based on the decrypted messages and said counter value verification.
However, Fileccia disclosed a scan count (Fileccia [0030]), … a counter algorithm configured to increment a scan count upon each successful authentication attempt (Fileccia [0030]), … storing a corresponding expected counter value for each unique identifier, … determin[ing] the authenticity of the product by comparing a decrypted counter value from the RF device with the corresponding expected counter value stored in the database (Fileccia [0030], [0036]), …, … and transmitting authenticity of scanned products…based on the decrypted messages and said counter value verification. (Fileccia [0030], [0034])
It would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to count RFID tag scans in Engels when verifying authenticity of products in order to prevent cyberattacks on the database.
In regard to claim 2, Engels disclosed wherein the verification server is further configured to:
maintain a database of unique identifiers corresponding to products located in a store; Engels [0064]
determine products sold by receiving data from a point of sale system; Engels [0074], [0157]
identify products as stolen if the unique identifier is not detected within the store and no sale is recorded; and Engels [0078]
return a stolen product warning if an encrypted message received when a product identified stolen is scanned by a scanning device. Engels [0078]
In regard to claim 3, Fileccia disclosed wherein the verification server is further configured to:
maintain a database associating unique identifiers with owner profiles; Fileccia [0031]
receive and store an association between a unique identifier and an owner profile when a product is scanned and registered; Fileccia [0031] and
transfer the association to a new owner profile upon receiving an ownership transfer request. Fileccia [0031]
In regard to claim 4, Engels disclosed wherein the scanning device is a mobile device executing an authentication application for interfacing with the RF devices and verification server. Engels [0053]
In regard to claim 6, Engels disclosed wherein the encryption keys are generated and embedded into the RF devices by an encoding device during manufacturing or packaging of products. Engels [0067]
Claim 7 is rejected for substantially the same reasons as claim 1.
Claim 8 is rejected for substantially the same reasons as claim 3.
Claim 9 is rejected for substantially the same reasons as claim 2.
Claim 10 is rejected for substantially the same reasons as claim 4.
Claim 12 is rejected for substantially the same reasons as claim 6.
In regard to claim 13, Engels disclosed wherein the instructions utilize a verification server for storing decryption keys and product associations for the decryption and authentication. Engels [0065]
Claim 14 is rejected for substantially the same reasons as claim 1.
In regard to claim 15, Fileccia disclosed wherein the RF device generates the encrypted message by:
incrementing the counter value; (Fileccia [0030])
retrieving the unique identifier and encryption key; (Fileccia [0030]) and
generating the encrypted message using the unique identifier, counter value, and encryption key. (Fileccia [0030])
In regard to claim 16, Engels disclosed wherein the verification server determines authenticity and ownership status by:
decrypting the encrypted message using the stored decryption key; Engels [0065]
comparing the unique identifier to identifiers associated with products in its database; Engels [0065] and
analyzing owner profiles associated with the unique identifier. Engels [0065]
In regard to claim 17, Engels disclosed wherein the scanning device executes an authentication application to interface with the RF devices and verification server. Engels [0053]
In regard to claim 18, Engels disclosed receiving an ownership transfer request at the scanning device and transmitting to the verification server to update associated owner profiles. Engels [0058]
In regard to claim 19, Engels disclosed displaying product information associated with the unique identifier when an authenticity confirmation is received from the verification server. Engels [0058]
Claims 5 and 11 is/are rejected under 35 U.S.C. 103 as being unpatentable over Engels and Fileccia as applied to claims 1 and 8 above, and further in view of Prasad (US 2016/0012498).
In regard to claim 5, Engels in view of Fileccia failed to disclose wherein the verification server is further configured to maintain a database of authorized distributors and confirm distributor authenticity based on the decrypted messages.
However, Prasad disclosed wherein the verification server is further configured to maintain a database of authorized distributors and confirm distributor authenticity based on the decrypted messages. Prasad [0090]
It would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to keep a database of distributors in the Engels / Fileccia combination in order to ensure the products being produced are not counterfeit.
Claim 11 is rejected for substantially the same reasons as claim 5.
Conclusion
The prior art made of record and not relied upon is considered pertinent to applicant's disclosure.
Bini et al. US 2023/0394499
Hedtke et al. US 2014/0351588
Bertoli US 2017/0293918
Sommer et al. US 2023/0206739
Clark et al. US 11,809,941
Any inquiry concerning this communication or earlier communications from the examiner should be directed to Jeffrey R. Swearingen whose telephone number is (571)272-3921. The examiner can normally be reached M-F 8:00 am - 5:00 pm.
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Jeffrey R. Swearingen
Primary Examiner
Art Unit 2445
/Jeffrey R Swearingen/Primary Examiner, Art Unit 2445