DETAILED ACTION
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and the fee set forth in 37 CFR 1.17(e) has been timely paid, the finality of the previous Office action has been withdrawn pursuant to 37 CFR 1.114.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 December 4, 2025 has been entered.
Status of the Application
The present application, filed on or after March 16, 2013, is being examined under the first inventor to file provisions of the AIA .
The following is a Final Office Action in response to amended claims filed on December 4, 2025, the following has occurred: Claim 1, 5-7, 12, and 14 have been amended.
Claims 1-3 and 5-15 are currently pending and have been examined.
Response to Amendment
Previous Claim Objections have been withdrawn in light of the amendment.
Specification Objection has been added.
35 U.S.C. 101 rejection has been maintained in light of the amendment.
Previous 35 U.S.C. 103 rejection has been withdrawn, however, new 35 U.S.C. 103 rejection has been added in light of the amendment.
Information Disclosure Statement
The Information Disclosure Statement filed February 24, 2026 has been considered. Initialed copies of the Form 1449 are enclosed herewith.
Specification
The disclosure is objected to because of the following informalities: para. [0059] recites “collection (e.g., 124 in Fig. 1)” should read “collection (e.g., 134 in Fig. 1)” (bold emphasis included). Appropriate correction is required.
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.
Claims 1-3 and 5-15 are rejected under 35 U.S.C. 101 because the claimed invention is directed to an abstract idea without significantly more.
Step 1: Is the claim to a process, machine, manufacture or composition of matter? (MPEP 2106.03)
In the present application, claims 1-3 and 5-7 are directed to a computer product (i.e., an article of manufacture), Claims 8-11 are directed to a server (i.e., a machine), and Claims 12-15 are directed to a method (i.e. a process). Thus, the eligibility analysis proceeds to Step 2A. prong one.
Step 2A. prong one: Does the claim recite an abstract idea, law of nature, or natural phenomenon? (MPEP 2106.04)
The abstract idea recited in claim 1 is:
obtain an image of a tamper-evident cover over an authentication indicia of a consumable, wherein the tamper-evident cover is a one-time-use cover that, when manipulated to uncover the authentication indicia, cannot again be used to cover the authentication indicia, and wherein the authentication indicia encodes information that is used for authenticating the consumable;
perform automated image analysis of the obtained image of the tamper-evident cover to determine whether the cover has been subject to tampering;
in response to the automated image analysis result indicating that the cover of the authentication indicia has not been subject to tampering, obtain an image of the authentication indicia after the cover has been removed from the authentication indicia and
perform an authentication process to authenticate the consumable based on the authentication indicia; and
in response to the automated image analysis result indicating that the cover of the authentication indicia has been subject to tampering, stop the authentication process of the consumable.
The abstract idea recited in claim 8 is:
receive an identifier of a consumable;
mark the consumable as claimed for use;
receive information of an authentication indicia on the consumable, wherein the authentication indicia encodes information that is used for authenticating the consumable, the authentication indicia captured after a cover of the authentication indicia has been removed from the authentication indicia; and
perform an authentication process to authenticate the consumable based on the authentication indicia; and
in response to information indicating that the cover of the authentication indicia has been subject to tampering, stop the authentication process of the consumable.
The abstract idea recited in claim 12 is:
presenting to initiate a process to authenticate a consumable for use;
obtain[ing] an image of a tamper-evident cover over an authentication indicia of the consumable, wherein the tamper-evident cover is a one-time-use cover that, when manipulated to uncover the authentication indicia, cannot again be used to cover the authentication indicia;
performing automated image analysis of the obtained image of the tamper-evident cover to determine whether the cover has been subject to tampering;
in response to the automated image analysis result indicating that the cover of the authentication indicia on the consumable has not been subject to tampering, capturing, an image of the authentication indicia after the cover has been removed from the authentication indicia and
sending information comprising an identifier of the consumable extracted based on the authentication indicia, the information for authentication of the consumable; and
in response to the automated image analysis result indicating that the cover of the authentication indicia has been subject to tampering, stopping the authentication process of the consumable.
(Note: The Examiner asserts the term “automated” does not mean without human interaction. Examiner asserts a process may be automatic even though a human initiates or may interrupt to the process. The term “automated” can be construed to mean “once initiated by a human, the function is performed by a machine, without the need for manually performing the function.” Collegenet, Inc. v. Applyyourself, Inc. (CAFC, 04-1202,-1222,-1251, 8/2/2005).)
The claimed invention is directed to an abstract idea of authenticating consumable product from tamper cover detection.
The limitations above recite concepts performable in the human mind including observation, evaluation, and judgement, which falls under “Mental Processes,” one of the abstract idea categories. Under the broadest reasonable interpretation, other than the additional elements (which will be addressed under step 2A prong 2 and step 2B), the claims recite processes that are all acts that could be performed by a human, e.g., mentally or manually, using a pen and paper, without the need of a computer or any other machine. For example, a person can observe if a temper-evident cover such as a scratch-off cover has been scratched off (uncovered); evaluate that the cover has not been tampered with to proceed for authentication process, however, if evaluated that the cover has been tampered with, then the authentication process is not required. Because the limitations above closely follow the steps of collecting information and analyzing the collected information, and the steps involved human judgements, observations, and evaluations that can be practically or reasonably performed in the human mind, the claims recite an abstract idea consistent with the “Mental Processes” grouping of the abstract ideas, set forth in MPEP 2106.04(a)(2)(III).
Additionally, under the broadest reasonable interpretation, other than the additional elements, the above-mentioned claim limitations also recite managing personal behavior or relationship or interactions between people such as following rules or instructions for authentication consumables products, that falls under “Certain Methods of Organizing Human Activity” grouping of the abstract ideas, set forth in MPEP 2106.04(a)(2)(II).
Accordingly, the above-mentioned limitations are considered as a single abstract idea, therefore, the claims recite an abstract idea and the analysis proceeds to Step 2A. prong two.
Step 2A. prong two: Does the claim recite additional elements that integrate the judicial exception into a practical application? (MPEP 2106.04)
This judicial exception is not integrated into a practical application because the additional elements merely add instructions to apply the abstract idea to a computer.
The additional elements considered include:
Claim 1: “A non-transitory machine-readable storage medium comprising instructions that upon execution cause a device to:”; “activate, by the device, a camera or other imaging sensor to”; “by the device”;
Claim 8: “A server comprising: a processor; and a non-transitory storage medium storing instructions executable on the processor to:”; “over a network from a device”; “over the network from the device,” “by a camera of the device”;
Claim 12: “by a device, a user interface comprising a user-selectable element”; “in response to activation of the user-selectable element, activating, by the device, a camera or other imaging sensor to”; “by the device,” “by the device over a network to a server,”
In particular, the claim only recites the above-mentioned additional elements to activate camera, perform automated image analysis, obtain image, and receive, obtain, present, initiate, capture, authenticate, send, and stop information. The computer in the steps is recited at a high-level of generality (i.e., as generic computer components performing a generic computer function; See Applicant’s Specification at least at paragraphs [0019]-[0024], [0027], [0066]-[0071] and Fig. 1 describing the generic user devices with processor, non-transitory storage medium, user interface, camera, and network communication) such that it amounts to no more than mere instructions to apply the exception using a generic computer component.
That is, the function of limitations [A]-[P] are steps of adding the words “apply it” (or an equivalent) with the judicial exception, or mere instructions to implement an abstract idea on a computer, or merely uses a computer as a tool to perform an abstract idea as discussed in MPEP 2106.05(f). The combination of these additional elements is no more than mere instructions to apply the exception using a generic computer. Accordingly, even in combination, these additional element(s) do not integrate the abstract idea into a practical application because they do not improve a computer or other technology, do not transform a particular article, do not recite more than a general link to a computer, and do not invoke the computer in any meaningful way; the general computer is effectively part of the preamble instruction to “apply” the exception by the computer. Therefore, the claims are directed to an abstract idea and the analysis proceeds to Step 2B.
Step 2B: Does the claim recite additional elements that amount to significantly more than the judicial exception? (MPEP 2106.05)
The claim(s) does/do not include additional elements that are sufficient to amount to significantly more than the judicial exception because the bold portions of the limitations recited above, were all considered to be an abstract idea in Step2A-Prong Two. The additional elements and analysis of Step2A-Prong two is carried over. For the same reason, these elements are not sufficient to provide an inventive concept. Applicant has merely recited elements that instruct the user to apply the abstract idea to a computer or other machinery. When considered individually and in combination the conclusion, as discussed above with respect to integration of the abstract idea into a practical application, the additional elements of using a computer to perform the above-mentioned limitations [A]-[P] amount to no more than mere instructions to apply the function of the limitations to the exception using generic computer component, as discussed in MPEP 2106.05(f). The claim as a whole merely describes how to generally “apply” the concept for authenticating consumable product from tamper cover detection. Thus, viewed as a whole, nothing in the claim adds significantly more (i.e. an inventive concept) to the abstract idea. For these reasons there is no inventive concept in the claims and thus are ineligible.
As for dependent claims 2, 3 and 7, these claims recite limitations that further define the abstract idea noted in the independent claim 1. The claims further recite abstract steps of sending and receiving information over network, which are merely step of transmitting, receiving, and presenting data which are insignificant extra-solution activity to the judicial exception as discussed in MPEP 2106.05(g). The courts have recognized that the computer functions claimed (the “sending” and "receiving" limitations) as WURC (see 2106.05(d)(II), identifying, receiving or transmitting data over a network as WURC, as recognized by Symantec). The additional elements of device transmitting information over network is recited at a high level of generality (i.e. as a generic computer system performing generic computer functions) such that it amounts no more than mere instructions to apply the exception using a generic computer component, as discussed in MPEP 2106.05(f). Even in combination, the additional element does not integrate the abstract idea into a practical application and do not amount to significantly more than the abstract idea itself. The claims are ineligible.
As for dependent claims, 5, 6, 9, and 10, these claims recite limitations that further define the abstract idea noted in the independent claim. The claims recite additional abstract step of authentication process and condition to decline to authenticate when the identifier of the consumable was previously claimed for use. The step is recited at a high level of generality such that it amounts no more than mere instructions to apply the exception using a generic computer component. Even in combination, the additional element does not integrate the abstract idea into a practical application and do not amount to significantly more than the abstract idea itself. The claims are ineligible.
As for dependent claim 11, the claim recites limitations that further define the abstract idea noted in the independent claim. The claim recites additional abstract step of verify digital signature using a key. The step is recited at a high level of generality such that it amounts no more than mere instructions to apply the exception using a generic computer component. Even in combination, the additional element does not integrate the abstract idea into a practical application and do not amount to significantly more than the abstract idea itself. The claim is ineligible.
As for dependent claims 13 and 14, the claims recite limitations that further define the abstract idea noted in the independent claim. The claims recite additional abstract description information for the authentication indicia, which does not change the abstract idea of the independent claim. The further descriptive details of the claims do not include an improvement to another technology or technical field, an improvement to the functioning of the computer itself, or meaningful limitations beyond generally linking the use of an abstract idea to a particular technology environment. The claims are ineligible.
As for dependent claim 15, the claims recite limitations that further define the abstract idea noted in the independent claim. The claims further clarify the functions of presenting, prompting, capturing, and sending information is performed by an application program, which is recited at a high-level of generality (i.e. as a generic computer system performing generic computer functions) such that it amounts no more than mere instructions to apply the exception using a generic computer component, see MPEP 2106.05(f). Even in combination, the additional element does not integrate the abstract idea into a practical application and do not amount to significantly more than the abstract idea itself. The claim is ineligible.
In summary, the dependent claims considered both individually and as ordered combination do not provide meaningful limitations to transform the abstract idea into a patent eligible application of the abstract idea such that the claims amount to significantly more than the abstract idea itself. The claims do not recite an improvement to another technology or technical field, an improvement to the functioning of the computer itself, or provide meaningful limitations beyond generally linking an abstract idea to a particular technological environment. Therefore, claims 1-3 and 5-15 are rejected under 35 U.S.C. 101.
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 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 set forth in Graham v. John Deere Co., 383 U.S. 1, 148 USPQ 459 (1966), that are applied for establishing a background for determining obviousness under pre-AIA 35 U.S.C. 103(a) 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.
Claims 1-3, 5-7, 12, and 15 are rejected under 35 U.S.C. 103 as being unpatentable over Lev (US 20210295745 A1) in view of Costabeber (US 20180178452 A1).
Claim 1, lev discloses a non-transitory machine-readable storage medium comprising instructions that upon execution cause a device to (para. [0060]-[0065], [0082], [0089]):
activate, by the device, a camera or other imaging sensor to obtain an image of a tamper-evident cover over an authentication indicia of a consumable, wherein the tamper-evident cover is a one-time-use cover that, when manipulated to uncover the authentication indicia, cannot again be used to cover the authentication indicia (Fig. 2 and para. [0084], [0095], and [0111] disclosing camera or sensor 210 for obtaining visual sensory data comprising one or more images of a seal 208 (i.e., tamper-evidence cover) applied to an object 206. In para. [0042], [0069], [0073], [0079] disclosing the seal 208 may be implemented using a gel 208C, for example, a clear gel, a glittering gel embedding glittering particles (e.g. crystalized particles, plastic, etc.) and/or the like, may be applied, for example, spread over a label such as the label 208A which is representative of tamper-evident cover over an authentication indicia of a consumable. The paragraphs further disclose, the seal or gel applied such that any attempt to tamper with causes damage that makes the seal visually non-restorable to its original state and may not be restored to its previous state, thereby making it a one-time-use cover that, when manipulated to uncover the authentication indicia, cannot again be used to cover the authentication indicia), and
perform, by the device, automated image analysis of the obtained image of the tamper-evident cover to determine whether the cover has been subject to tampering (Lev, para. [0089]-[0092], [0111]-[0117] discloses a tamper detector 240 is a software module executed by a processor, that analyzes the captured image of the seal to identify manufacturing defects/wearing marks and compares them to stored signature to determine if the seal has been compromised/tampered with);
in response to the automated image analysis result indicating that the cover of the authentication indicia has not been subject to tampering, obtain an image of the authentication indicia after the cover has been removed from the authentication indicia and perform an authentication process to authenticate the consumable based on the authentication indicia (Lev, [0116], [0118] discloses determining that the seal is intact, compares the recorded signature as identified by analyzing the images of the seal 208, therefore determine that the object 206 was not tampered with); and
in response to the automated image analysis result indicating that the cover of the authentication indicia has been subject to tampering (Lev, [0117]-[0120] discloses that if the image analysis determines there is no match with the signature, the system determines the seal was compromised/tampered with).
The only difference between the claimed invention and Levi is that, Levi fails to expressly disclose authenticating the authentication indicia encodes information for the consumable as result of automated image analysis result of the cover of the authenticating indicia has been or not tampered with.
Specifically, Levi fails to expressly disclose the limitations (italic emphasis):
wherein the authentication indicia encodes information that is used for authenticating the consumable;
in response to the automated image analysis result indicating that the cover of the authentication indicia has not been subject to tampering, obtain an image of the authentication indicia after the cover has been removed from the authentication indicia and perform an authentication process to authenticate the consumable based on the authentication indicia; and
in response to the automated image analysis result indicating that the cover of the authentication indicia has been subject to tampering, stop the authentication process of the consumable.
Nonetheless, Costabeber is in similar field of digital authentication system using central server for validating and authenticating consumable elements such as recharge cartridges for printers, which specifically teaches,
wherein the authentication indicia encodes information that is used for authenticating the consumable (Costabeber, para. [0039]-[0041], [0111], teaches the authentication indicia (univocal identification code) encodes information used for authenticating the consumable via a remote server);
in response to the automated image analysis result indicating that the cover of the authentication indicia has not been subject to tampering, obtain an image of the authentication indicia after the cover has been removed from the authentication indicia and perform an authentication process to authenticate the consumable based on the authentication indicia (para. [0111]-[0115] teaches removing/accessing the consumable and reading the authentication indicia using an electronic reading device to perform an authentication process against a remote server database);
in response to the automated image analysis result indicating that the cover of the authentication indicia has been subject to tampering, stop the authentication process of the consumable (the limitations comprise a contingent limitation, wherein, “stop the authentication process of the consumable” is associated with the contingency of, “in response to the automated image analysis result indicating that the cover of the authentication indicia has been subject to tampering”. The broadest reasonable interpretation of a method (or process) claim having contingent limitations requires only those steps that must be performed and does not include steps that are not required to be performed because the condition(s) precedent is not met, and the broadest reasonable interpretation of a system claim requires structure for performing the function should the condition occur,” (See MPEP 2111.04, MPEP 2143.03). This contingent limitation is directed to an alternative process flow that is not required during the normal and intended operation of the method. In the primary operation scenario of the first contingent limitation, for which the invention is designed, the cover has not been subject to tampering. Therefore, this condition is not met, and the step of “stop the authentication process of the consumable” is not a required step of the primary operation scenario, which the “stopping” action results no action for no result. It would have been an obvious and routine design choice for a programmer to include basic error handing for a failed security check. If the user indicates the cover is tampered with, the most logical and predictable action is to simply halt or “stop” the process to provide no action from the device. This amounts to nothing more than implementing a fundamental if-then-else logical statement, which is well within the skill of an ordinary skilled in the art).
Therefore, it would have been obvious for one of ordinary skill in the art, before the effective filling of the invention to modify the system and method of Levi for automated image analysis verification and utilizing the tamper-evident seal as a protective cover over the visual authentication indicia of Costabeber for determining the seal is intact, it would have been obvious and intended next step to proceed with authentication, as taught by Costabeber for the motivation of solving the known vulnerability of counterfeiting by ensuring the digital authentication code cannot be accessed, copied, or scanned without first breaking a physical seal.
Claim 2, the combination of Lev and Costabeber make obvious of the non-transitory machine-readable storage medium of claim 1. Costabeber further teaches
wherein the performing of the authentication process comprises: sending, over a network to a server, information based on the authentication indicia (para. [0079] and [0083]), and
receiving, over the network from the server, an indication that the consumable is authentic (para. [0047] and [0084] disclosing the comparison to verify the univocal identification code is authentic and active and send/receive from the remote server).
The rationales and motivation to modify/combine the teachings of Costabeber with/and the teachings of Lev are presented in the examining of independent claim 11 and incorporated herein.
Claim 3, the combination of Lev and Costabeber make obvious of the non-transitory machine-readable storage medium of claim 2. Costabeber further teaches
wherein the instructions upon execution cause the device to: send, over the network to the server, claiming information indicating that a user of the device is claiming use of the consumable (para. [0084], [0086], [0089], and [0091]).
The rationales and motivation to modify/combine the teachings of Costabeber with/and the teachings of Lev are presented in the examining of independent claim 11 and incorporated herein.
Claim 5, the combination of Lev and Costabeber make obvious of the non-transitory machine-readable storage medium of claim 1. Lev further discloses
perform automated image analysis of the tamper-evident cover to detect tampering, wherein the information is responsive to the automated image analysis result (para. [0116]-[0122] disclosing tamper detector 240 for image analysis determining whether the seal or tamper-evident cover has been tampered with).
Claim 6, the combination of Lev and Costabeber make obvious of the non-transitory machine-readable storage medium of claim 1. Costabeber further teaches
perform the receiving of the information, the obtaining of the image, and the performing of the authentication process while the device is offline from a server (para. [0113] and [0116] “a smartphone, and with a particular configuration of the remote server 61 and the data processing unit 3 makes it possible to define a redundant system that, in case of absence of direct communication between the remote server 61 and the data processing unit 3, makes it possible to proceed with the validation of the consumable elements 4 and to enable the stereolithography machine 2 to carry out the printing process.”).
The rationales and motivation to modify/combine the teachings of Costabeber with/and the teachings of Lev are presented in the examining of independent claim 11 and incorporated herein.
Claim 7, the combination of Lev and Costabeber make obvious of the non-transitory machine-readable storage medium of claim 6. Costabeber further teaches
after the device establishes a connection with the server following the performing of the authentication process, provide, to the server over the network, results of the automated image analysis and authentication process that has been performed offline (para. [0113] and [0116] disclosing the performing of authentication process over network).
The rationales and motivation to modify/combine the teachings of Costabeber with/and the teachings of Lev are presented in the examining of independent claim 11 and incorporated herein.
Claim 12, lev discloses a method (abstract) comprising:
activating, by the device, a camera or other imaging sensor to obtain an image of a tamper-evident cover over an authentication indicia on the consumable, wherein the tamper-evident cover is a one-time-use cover that, when manipulated to uncover the authentication indicia, cannot again be used to cover the authentication indicia (Fig. 2 and para. [0084], [0095], and [0111] disclosing camera or sensor 210 for obtaining visual sensory data comprising one or more images of a seal 208 (i.e., tamper-evidence cover) applied to an object 206. In para. [0042], [0069], [0073], [0079] disclosing the seal 208 may be implemented using a gel 208C, for example, a clear gel, a glittering gel embedding glittering particles (e.g. crystalized particles, plastic, etc.) and/or the like, may be applied, for example, spread over a label such as the label 208A which is representative of tamper-evident cover over an authentication indicia of a consumable. The paragraphs further disclose, the seal or gel applied such that any attempt to tamper with causes damage that makes the seal visually non-restorable to its original state and may not be restored to its previous state, thereby making it a one-time-use cover that, when manipulated to uncover the authentication indicia, cannot again be used to cover the authentication indicia);
performing, by the device, automated image analysis of the obtained image of the tamper-evident cover to determine whether the cover has been subject to tampering (Lev, para. [0089]-[0092], [0111]-[0117] discloses a tamper detector 240 is a software module executed by a processor, that analyzes the captured image of the seal to identify manufacturing defects/wearing marks and compares them to stored signature to determine if the seal has been compromised/tampered with);
in response to the automated image analysis result indicating that the cover of the authentication indicia on the consumable has not been subject to tampering (Lev, [0116], [0118] discloses determining that the seal is intact, compares the recorded signature as identified by analyzing the images of the seal 208, therefore determine that the object 206 was not tampered with);
in response to the automated image analysis result indicating that the cover of the authentication indicia has been subject to tampering (Lev, [0117]-[0120] discloses that if the image analysis determines there is no match with the signature, the system determines the seal was compromised/tampered with).
However, Levi fails to expressly disclose the interaction with the user interface and authenticating the authentication indicia encodes information for the consumable as result of automated image analysis result of the cover of the authenticating indicia has been or not tampered with.
Specifically, Levi fails to expressly disclose the limitations (italic emphasis):
presenting, by a device, a user interface comprising a user-selectable element to initiate a process to authenticate a consumable for use;
in response to activation of the user-selectable element,
capturing, by the device, an image of the authentication indicia after the cover has been removed from the authentication indicia and sending, by the device over a network to a server, information comprising an identifier of the consumable extracted based on the authentication indicia, the information for authentication of the consumable; and
in response to the automated image analysis result indicating that the cover of the authentication indicia has been subject to tampering, stopping, by the device, the authentication process of the consumable.
Nonetheless, Costabeber is in similar field of digital authentication system using central server for validating and authenticating consumable elements such as recharge cartridges for printers, which specifically teaches,
presenting, by a device, a user interface comprising a user-selectable element to initiate a process to authenticate a consumable for use; in response to activation of the user-selectable element (para. [0051], [0064], [0112] and [0116] disclosing user interaction of with user interface to allow validity code to be entered),
capturing, by the device, an image of the authentication indicia after the cover has been removed from the authentication indicia and sending, by the device over a network to a server, information comprising an identifier of the consumable extracted based on the authentication indicia, the information for authentication of the consumable (para. [0035]-[0037], [0040], [0079], and [0083] reading univocal identification code on consumable element to verify if the item is authentic and transmitted over network to remove server).
in response to the automated image analysis result indicating that the cover of the authentication indicia has been subject to tampering, stopping, by the device, the authentication process of the consumable (the limitations comprise a contingent limitation, wherein, “stopping, by the device, the authentication process of the consumable” is associated with the contingency of, “in response to the automated image analysis result indicating that the cover of the authentication indicia has been subject to tampering” The broadest reasonable interpretation of a method (or process) claim having contingent limitations requires only those steps that must be performed and does not include steps that are not required to be performed because the condition(s) precedent is not met, and the broadest reasonable interpretation of a system claim requires structure for performing the function should the condition occur,” (See MPEP 2111.04, MPEP 2143.03). This contingent limitation is directed to an alternative process flow that is not required during the normal and intended operation of the method. In the primary operation scenario of the first contingent limitation, for which the invention is designed, the cover has not been subject to tampering. Therefore, this condition is not met, and the step of “stopping, by the device, the authentication process of the consumable” is not a required step of the primary operation scenario, which the “stopping” action results no action for no result. It would have been an obvious and routine design choice for a programmer to include basic error handing for a failed security check. If the user indicates the cover is tampered with, the most logical and predictable action is to simply halt or “stop” the process to provide no action from the device. This amounts to nothing more than implementing a fundamental if-then-else logical statement, which is well within the skill of an ordinary skilled in the art).
Therefore, it would have been obvious for one of ordinary skill in the art, before the effective filling of the invention to modify the system and method of Levi for automated image analysis verification and utilizing the tamper-evident seal as a protective cover over the visual authentication indicia of Costabeber for determining the seal is intact, it would have been obvious and intended next step to proceed with authentication, as taught by Costabeber for the motivation of solving the known vulnerability of counterfeiting by ensuring the digital authentication code cannot be accessed, copied, or scanned without first breaking a physical seal.
Claim 15, the combination of Lev and Costabeber make obvious of the method of claim 12. Costabeber further teaches.
wherein the presenting, the prompting, the capturing, and the sending are performed by an application program executed in the device responsive to launching of the application program (para. [0114]-[0116]).
The rationales and motivation to modify/combine the teachings of Costabeber with/and the teachings of Lev are presented in the examining of independent claim 12 and incorporated herein.
Claims 8-10 are rejected under 35 U.S.C. 103 as being unpatentable over Costabeber (US 20180178452 A1) in view of Luke (US 20160342110 A1).
Claim 8, Costabeber discloses a server (para. [0049] and [0056], remote server) comprising:
a processor (para. [0080] microprocessor); and
a non-transitory storage medium storing instructions executable on the processor to (para. [0071] storing means which computer program is stored):
receive, over a network from a device, an identifier of a consumable (para. [0079] and [0083] disclosing the transmitting and receiving of univocal identification code ID of consumable element;
mark the consumable as claimed for use (para. [0084], [0086], [0089], and [0091]);
perform an authentication process to authenticate the consumable based on the authentication indicia (para. [0035]-[0037] and [0040], reading univocal identification code on consumable element to verify if the item is authentic and active).
However, Costabeber fails to disclose, receive, over the network from the device, information of an authentication indicia on the consumable, wherein the authentication indicia encodes information that is used for authenticating the consumable, the authentication indicia captured by a camera of the device after a cover of the authentication indicia has been removed from the authentication indicia; and
in response to the information indicating that the cover of the authentication indicia has been subject to tampering, stop the authentication process of the consumable.
Nonetheless, Luke is directed to similar field for scanning authentication code for authenticity of product, which specifically teaches,
receive, over the network from the device, information of an authentication indicia on the consumable, wherein the authentication indicia encodes information that is used for authenticating the consumable, the authentication indicia captured by a camera of the device after a cover of the authentication indicia has been removed from the authentication indicia (Para. [0002], [0020], and [0024]-[0026] teaches receive/transmit over the network to connected server for authentication. In para. [0017] disclosing allow the reading of authenticity information 7, 9 on the carrier 5 through a window. Para. [0034] indicates only before a first installation of the original OEM cartridge, the cartridge can be authenticated by the disclosed authenticity information, and afterwards not anymore. In para. [0023] and Figs. 1 and 2 disclosing carrier 5 (i.e., authentication indicia) and logo 7 has been displace, tear, destroy or unravel, the original authentication code is rendered undetectable by a scanning device. Other examples are provided in para. [0028]-[0034] regarding the carrier or label having the authenticity information); and
in response to the information indicating that the cover of the authentication indicia has been subject to tampering, stop the authentication process of the consumable (the limitations comprise a contingent limitation, wherein, “stop the authentication process of the consumable” is associated with the contingency of, “in response to the information indicating that the cover of the authentication indicia has been subject to tampering,” The broadest reasonable interpretation of a method (or process) claim having contingent limitations requires only those steps that must be performed and does not include steps that are not required to be performed because the condition(s) precedent is not met, and the broadest reasonable interpretation of a system claim requires structure for performing the function should the condition occur,” (See MPEP 2111.04, MPEP 2143.03). Still, Luke, para. [0023] and [0029] identify the authenticity information is altered (i.e., tampered), in consequence, subsequent authentication is inhibited).
Therefore, it would have been obvious for one of ordinary skill in the art, before the effective filling of the invention to modify the system and method of Costabeber for authentication a consumable product based on authentication indicia such as identification code to include the feature of identifying if the cover of authentication indicia label has been tampered and obtain image for authentication if the authentication is not tampered or altered, as taught by Luke for the motivation of ensuring the product such as cartridges is produced by original equipment manufacturers for best quality and warranty.
Regarding to the limitation, “in response to the information indicating that the cover of the authentication indicia has been subject to tampering, stop the authentication process of the consumable.” this contingent limitation is directed to an alternative process flow that is not required during the normal and intended operation of the method. In the primary operation scenario of the first contingent limitation, for which the invention is designed, the cover has not been subject to tampering. Therefore, this condition is not met, and the step of “stopping the authentication process” is not a required step of the primary operation scenario, which the “stopping” action results no action for no result. It would have been an obvious and routine design choice for a programmer to include basic error handing for a failed security check. If the user indicates the cover is tampered with, the most logical and predictable action is to simply halt or “stop” the process to provide no action from the device. This amounts to nothing more than implementing a fundamental if-then-else logical statement, which is well within the skill of an ordinary skilled in the art and adds no patentable weight to the claim.
Claim 9, the combination of Costabeber and Luke make obvious of the server of claim 8. Costabeber further discloses
wherein the instructions are executable on the processor to perform the authentication process further based on checking whether the identifier of the consumable was previously claimed for use (para. [0084], [0085], [0091], [0092]).
Claim 10, the combination of Costabeber and Luke make obvious of the server of claim 8. Costabeber further discloses
wherein the instructions are executable on the processor to decline to authenticate the consumable in response to detecting that the identifier of the consumable was previously claimed for use (para. [0042]-[0044]).
Claim 11 is rejected under 35 U.S.C. 103 as being unpatentable over Costabeber (US 20180178452 A1) in view of Luke (US 20160342110 A1) and further in view of Markel (US 20140077928 A1).
Claim 11, the combination of Costabeber and Luke make obvious of the server of claim 8. However, the combination fails to teach,
wherein the information of the authentication indicia comprises a digital signature, and wherein instructions are executable on the processor to: verify the digital signature using a key.
Nonetheless, Markel is directed to similar product authentication for detecting tampering, which specifically teaches,
wherein the information of the authentication indicia comprises a digital signature (para. [0021] teaches code reader read bar code identification information to authenticate the digital signature), and wherein instructions are executable on the processor (para. [0030]-[0032]) to:
verify the digital signature using a key (para. [0022] and [0028]-[0029] teaching verifying the digital signature using cryptographic key).
Therefore, it would have been obvious for one of ordinary skill in the art, before the effective filling of the invention to modify the server of Costabeber for authenticating product based on authentication indicia (i.e., barcode label) to include the feature of digital signature and cryptographic key as taught by Markel for the motivation of providing a more secure and effective system in ensuring authenticity and integrity of the product (para. [0003]).
Claim 13 is rejected under 35 U.S.C. 103 as being unpatentable over Lev (US20210295745A1) in view of Costabeber (US 20180178452 A1), and further in view of Luke (US 20160342110 A1).
Claim 13, the combination of Lev and Costabeber make obvious of the method of claim 12. However, the combination does not expressly teach the specifics of wherein the authentication indicia is hidden or rendered unreadable upon use of the consumable in a machine.
Luke is directed to similar authenticating information on printer cartridge, which specifically teaches, wherein the authentication indicia is hidden or rendered unreadable upon use of the consumable in a machine (para. [0023], [0031]-[0033] teaches the first use or installation of the cartridge causes the authenticity information unreadable).
Therefore, it would have been obvious for one of ordinary skill in the art, before the effective filling of the invention to modify the system and method of Lev and Costabeber for authentication a consumable product based on authentication indicia with tamper-evident cover to include the feature of self-destruct the seal and authentication label as taught by Luke for the motivation of ensuring the product such as cartridges is produced by original equipment manufacturers for best quality and warranty with the prevention of post-use fraudulent refilling.
Claim 14 is rejected under 35 U.S.C. 103 as being unpatentable over Lev (US20210295745A1) in view of Costabeber (US 20180178452 A1), and further in view of Kruse (US 20070055883 A1).
Claim 14, the combination of Lev and Costabeber make obvious of the method of claim 12. However, the combination does not expressly teach wherein the tamper-evident cover over the authentication indicia comprises a scratch-off cover or a removable flap.
Kruse is directed to similar field of production authentication, which specifically teaches, wherein the tamper-evident cover over the authentication indicia comprises a scratch-off cover or a removable flap (claim 2 and para. [0014] teaches authentication code is concealed by a removeable cover that is consists of a scratch-off layer).
Therefore, it would have been obvious for one of ordinary skill in the art, before the effective filling of the invention to modify the system and method of Lev for the tamper evident element or seal as a cover that includes stickers, straps, or gel to include other cover such as a scratch-off layer as taught by Kruse for the motivation of ease of identifying whether if the surface as been scratched off with simple visual inspection. Further the selection of well-known type of cover from a finite number of known options to use in an established system for the intended purpose of covering label constitutes an obvious design choice with no unexpected result.
35 U.S.C. 101 Rejections:
The Applicant’s remarks are fully considered, however, it is found to be unpersuasive.
Per Applicant’s 101 remarks on pages 7, 8, and 11, the Examiner respectfully disagrees.
The use of additional element for computer device with camera to acquire image data of the tamper-evident cover itself for image analysis to detect tampering does not change the abstract idea of the claimed invention.
The abstract idea is still directed to a process of acquiring image data to identify whether if the tamper-evident cover has been tampered with to further proceed with authentication, which a person can perform such steps with visual observation and analysis.
The additional element of computer device with camera, processor, memory, and user interface are recited at a high-level of generality to perform the abstract steps of the claims. That is indicated in MPEP 2106.05(f)(1), The recitation of claim limitations that attempt to cover any solution to an identified problem with no restriction on how the result is accomplished and no description of the mechanism for accomplishing the result, does not integrate a judicial exception into a practical application or provide significantly more because this type of recitation is equivalent to the words "apply it". See Electric Power Group, LLC v. Alstom, S.A., 830 F.3d 1350, 1356, 119 USPQ2d 1739, 1743-44 (Fed. Cir. 2016); Intellectual Ventures I v. Symantec, 838 F.3d 1307, 1327, 120 USPQ2d 1353, 1366 (Fed. Cir. 2016); Internet Patents Corp. v. Active Network, Inc., 790 F.3d 1343, 1348, 115 USPQ2d 1414, 1417 (Fed. Cir. 2015). MPEP 2106.05(f)(2), Use of a computer or other machinery in its ordinary capacity for economic or other tasks (e.g., to receive, store, or transmit data) or simply adding a general purpose computer or computer components after the fact to an abstract idea (e.g., a fundamental economic practice or mathematical equation) does not integrate a judicial exception into a practical application or provide significantly more. See Affinity Labs v. DirecTV, 838 F.3d 1253, 1262, 120 USPQ2d 1201, 1207 (Fed. Cir. 2016) (cellular telephone); TLI Communications LLC v. AV Auto, LLC, 823 F.3d 607, 613, 118 USPQ2d 1744, 1748 (Fed. Cir. 2016) (computer server and telephone unit). “TLI Communications provides an example of a claim invoking computers and other machinery merely as a tool to perform an existing process. The court stated that the claims describe steps of recording, administration and archiving of digital images, and found them to be directed to the abstract idea of classifying and storing digital images in an organized manner. 823 F.3d at 612, 118 USPQ2d at 1747. The court then turned to the additional elements of performing these functions using a telephone unit and a server and noted that these elements were being used in their ordinary capacity (i.e., the telephone unit is used to make calls and operate as a digital camera including compressing images and transmitting those images, and the server simply receives data, extracts classification information from the received data, and stores the digital images based on the extracted information). 823 F.3d at 612-13, 118 USPQ2d at 1747-48. In other words, the claims invoked the telephone unit and server merely as tools to execute the abstract idea. Thus, the court found that the additional elements did not add significantly more to the abstract idea because they were simply applying the abstract idea on a telephone network without any recitation of details of how to carry out the abstract idea.” Courts previously deemed the use of camera and cellular telephone to record (i.e., capture, obtain), transmit, and archive digital images not an improvement in computer-functionality.
Therefore, considered individually and in combination, these additional elements do not integrate the abstract idea into a practical application and do not amount to significantly more than the abstract idea. Thus, the 101 rejection is maintained.
35 U.S.C. 103 Rejection:
The Examiner asserts that the Applicant’s arguments are directed towards amended claim limitations and are, therefore, considered moot. However, the Examiner has responded to the amended amendments, which the arguments are directed to, in the rejection above, thereby addressing the applicant’s arguments. New references have been introduced to teach the amended claim limitations.
Relevant Prior Art Not Relied Upon
The prior art made of record and not relied upon is considered pertinent to Applicant’s disclosure. The additional cited art, including but not limited to the excerpts below, further establishes the state of the art at the time of Applicant’s invention and shows the following was known:
R. Anderson, M. Bond, J. Clulow and S. Skorobogatov, "Cryptographic Processors-A Survey," in Proceedings of the IEEE, vol. 94, no. 2, pp. 357-369, Feb. 2006, doi: 10.1109/JPROC.2005.862423. Teaching public-key crypto processors embedded in devices such as printer ink cartridges.
Conclusion
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/WENREN CHEN/Primary Examiner, Art Unit 3626