DETAILED ACTION
This office action is in reply to applicant communication filed on December 05, 2025.
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 .
Claims 1-17 have been amended.
Claims 18-20 have been add
Claims 1-20 are pending.
Response to Argument
Applicant’s arguments filed on December 05, 2025 with respect to the 35 U.S.C. 103 rejections have been fully considered but are moot in view of new ground(s) of rejection.
Applicant’s arguments filed on December 05, 2025 with respect to the 35 U.S.C. 101 rejection of claim 12 have been fully considered and withdrawn in view of applicant argument and amendment.
Applicant’s arguments filed on December 05, 2025 with respect to the 35 U.S.C. 112 rejection of claims 3-7, 10 and 13 have been fully considered and withdrawn in view of applicant argument and amendment.
Applicant’s argues that the prior art on record fails to teach the amended limitation of independent claims. However, upon further consideration, a new ground(s) of rejection is made using the newly find prior arts to Rieul (US Pub. No. 2018/0205556).
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 of this title, if the differences between the claimed invention and the prior art are such that the claimed invention as a whole would have been obvious before the effective filing date of the claimed invention to a person having ordinary skill in the art to which the claimed invention pertains. Patentability shall not be negated by the manner in which the invention was made.
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Claims 1-10, 12-16 and 18-20 are rejected under 35 U.S.C. 103 as being unpatentable over Cowburn (US Pub. No. 2012/0170069) in view of Rieul (US Pub. No. 2018/0205556).
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As per claim 1 Cowburn discloses:
A method for authenticating an object, comprising: (paragraph 1 of Cowburn, the invention relates to security methods, more especially verification of authenticity of a printed document or other printed article such as a personal identification (ID) card, cardboard packaging item, or a unique document such as a bill of lading or document bearing an original signature, seal or stamp).
Receiving image data of an image comprising the object, by the device; (paragraph 85 of Cowburn, step S1 is a data acquisition step during which the optical intensity at each of the photodetectors is acquired approximately every 1 ms during the entire length of scan) and (paragraph 95 of Cowburn, an image file is then created by the application software using an appropriate printer driver).
Storing the image data with the barcode, (paragraph 16 of Cowburn, the digital signature derived from the data points is stored in a database with an image of what was printed on the article) and (paragraph 25 of Cowburn, the label is thus characteristic of the intrinsic structure of the article. In this case, the signature is preferably encoded in the label using an asymmetric encryption algorithm. For example, the label may represent a cryptogram decipherable by a public key in a public key/private key encryption system. It is highly convenient for many printable materials, especially paper and cardboard, if the label is an ink label applied with a printing process, preferably in the same process as article creation, i.e. in the same process as printing the image onto the document. For example, a piece of paper could be printed on with the image and then fed again through the printer to have the signature-encoding label printed on using a duplex sheet feeding mechanism. The label may be visible, e.g. a barcode, or invisible, e.g. embodied as data in a smart chip when the article is a smart card).
Cowburn teaches the method of generating the digital signature of an image data received from a scanner/printer (see paragraph 85 of Cowburn) fails to disclose:
Capturing a barcode in the image data the barcode containing a third-party public key; generating a digital signature with the device’s own private key depending on the image data, and receiving an image data from a camera.
However, in the same field of endeavor, Rieul teaches this limitation as, (paragraphs 11-14 of Rieul, the invention proposes a method for verifying the validity of an electronic document, characterized in that the method comprises the steps of: activation of an image-capture device and capture of an image sequence displayed by a device presenting the electronic document, the image sequence consisting of different two-dimensional barcodes displayed successively one after the other, the two-dimensional barcodes representing a signature of the electronic document and parts of the electronic document, decoding of the two-dimensional barcodes, verification of the validity of the signature by means of a public key, generation of a message representing the result of the verification) and (paragraphs 69-74 or Rieul, the electronic-document reading device SM2 comprises: a processor, microprocessor or microcontroller 300; a volatile memory 303; [0072] a non-volatile memory 302; an image capture device 305 such as a camera 305; a communication bus 301 connecting the processor 300 to the ROM memory 302, to the RAM memory 303 and to the image capture device 305).
Therefore, it would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to modify the teaching of Cowburn to include the above limitation using the teaching of Rieul in order to verify the validity of an electronic document (see paragraph 1 of Rieul).
Claims 12, 13 and 14 are rejected under the same reason set forth in rejection of claim 1.
As per claim 2 Cowburn in view of Rieul discloses:
The method according to claim 1, wherein the image data are integrated into an image file and the digital signature is integrated into additional data, of the image file and the provision of the image data and the digital signature corresponds to the provision of the image file. (Paragraph 25 of Cowburn, a piece of paper could be printed on with the image and then fed again through the printer to have the signature-encoding label printed on using a duplex sheet feeding mechanism. The label may be visible, e.g. a barcode, or invisible, e.g. embodied as data in a smart chip when the article is a smart card).
As per claim 3 Cowburn in view of Rieul discloses:
The method according to claim 1, wherein the captured barcode comprises additional information, wherein the additional information comprises: data indicating a current time and/or date, and/or data indicating information about the device displaying the barcode, and/or data indicating information about a user of the device, wherein the additional information is extracted from the image data with the device. (Paragraph 124 of Cowburn, the second pass then immediately prints a barcode, or other encoding label, containing an encrypted version of the digital signature onto the paper. This gives the possibility of `without database` checks on the document, although clearly the stored image of the document could not be checked without reference to a database. It is also possible to add other information to the barcode. A specific example of where this might be useful is in printing of cheques. The value of the cheque and optionally also a hash of the drawer's name could be included in the barcode)
As per claim 4 Cowburn in view of Rieul discloses:
The method according to claim 3, wherein the digital signature is generated as a function of the extracted additional information. (Paragraph 113 of Cowburn, verification step V4 is the main comparison between the scanned digital signature obtained in Scan Step S5 and the corresponding stored values in the database record of the hit).
As per claim 5 Cowburn in view of Rieul discloses:
The method according to claim 1, wherein: a) the digital signature corresponds to an image signature generated by encrypting the received image data with the device’s own private key, or b) the digital signature comprises an image signature and a key signature, wherein the image signature is generated by encrypting the received image data with the device’s own private key and the key signature by encrypting the third-party public key with the device’s own private key, or c) the signature corresponds to a combination signature generated by encrypting the combined image data received and the third-party public key, with the device’s own private key. (Paragraph 25 of Cowburn, the label is thus characteristic of the intrinsic structure of the article. In this case, the signature is preferably encoded in the label using an asymmetric encryption algorithm. For example, the label may represent a cryptogram decipherable by a public key in a public key/private key encryption system. It is highly convenient for many printable materials, especially paper and cardboard, if the label is an ink label applied with a printing process, preferably in the same process as article creation, i.e. in the same process as printing the image onto the document. For example, a piece of paper could be printed on with the image and then fed again through the printer to have the signature-encoding label printed on using a duplex sheet feeding mechanism. The label may be visible, e.g. a barcode, or invisible, e.g. embodied as data in a smart chip when the article is a smart card).
As per claim 6 Cowburn in view of Rieul discloses:
The method according to claim 1, further comprising displaying the device’s own barcode with the device’s own public key in a display of the device. (Paragraph 16 of Cowburn, the image is displayed together with other relevant bibliographic data relevant to the article. This provides a high security system which also includes human verification in the form of the visual comparison between the document or other printed article being examined and the document or other printed article shown on the display).
As per claim 7 Cowburn in view of Rieul discloses:
The method according to claim 6, wherein the device waits for a synchronization signal from another device after displaying the barcode and stores the received image data after receiving the synchronization signal, wherein the synchronization signal indicates that the further device has detected its own barcode. (Paragraph 71 of Cowburn, the functional components of a system for creating authenticatable articles. A printer 22 is connected to a personal computer (PC) 30 with a conventional connection 25. The detectors 16a . . . d of the detector module 16 are connected through respective electrical connection lines 17a . . . d to an analogue-to-digital converter (ADC) that is part of a programmable interrupt controller (PIC) 30. It will be understood that optical or wireless links may be used instead of, or in combination with, electrical links).
As per claim 8 Cowburn in view of Rieul discloses:
The method according to claim 1, wherein the image data and digital signature are third-party image data and a third-party digital signature, the method further comprising: checking whether the received third-party image data contains an image with a barcode, checking whether the barcode comprises the device’s own public key and storing the third-party image data and the third-party digital signature, in a database. (Paragraph 25 of Cowburn, the label is thus characteristic of the intrinsic structure of the article. In this case, the signature is preferably encoded in the label using an asymmetric encryption algorithm. For example, the label may represent a cryptogram decipherable by a public key in a public key/private key encryption system. It is highly convenient for many printable materials, especially paper and cardboard, if the label is an ink label applied with a printing process, preferably in the same process as article creation, i.e. in the same process as printing the image onto the document. For example, a piece of paper could be printed on with the image and then fed again through the printer to have the signature-encoding label printed on using a duplex sheet feeding mechanism. The label may be visible, e.g. a barcode, or invisible, e.g. embodied as data in a smart chip when the article is a smart card)
As per claim 9 Cowburn in view of Rieul discloses:
The method according to claim 8, wherein the database is a publicly accessible database to which unrestricted data access is possible, or the database is a protected database to which authorized users have access, wherein the database is stored locally on the device or in a memory of a remote computer. (Paragraph 16 of Cowburn, the digital signature derived from the data points is stored in a database with an image of what was printed on the article. At a later time, the authenticity of an article purported to be the originally printed article can be verified by scanning the purported genuine article to obtain its digital signature. The database is then searched to establish whether there is a match. If a match is found, the image stored in the database with the matched digital signature is displayed to the user to allow a further visual check that the article is genuine. The image is displayed together with other relevant bibliographic data relevant to the article).
As per claim 10 Cowburn in view of Rieul discloses:
The method according to claim 8, wherein the database provides an identifier for assessing the trustworthiness of the image data and the digital signature. (Paragraph 124 of Cowburn, the second pass then immediately prints a barcode, or other encoding label, containing an encrypted version of the digital signature onto the paper. This gives the possibility of `without database` checks on the document, although clearly the stored image of the document could not be checked without reference to a database. It is also possible to add other information to the bare ode).
As per claim 15 Cowburn in view of Rieul discloses:
The system according to claim 14, furthermore comprising a database in a memory of a remote computer, wherein the remote computer and each of the devices are set up to communicate with each other via a wireless interface of the device. (Paragraph 40 of Cowburn, the database may be part of a mass storage device that forms part of the reader apparatus, or may be at a remote location and accessed by the reader through a telecommunications link. The telecommunications link may take any conventional form, including wireless and fixed links, and may be available over the internet).
As per claim 16 Cowburn in view of Rieul discloses:
The method according to claim 1, wherein capturing the barcode includes capturing a two-dimensional barcode. (Paragraph 136 of Cowburn, it will also be understood that the scan area is essentially arbitrary in terms of its size or location on the printable surface of an article. If desired, the scan could be a linear scan rostered to cover a larger two-dimensional area).
As per claim 18 Cowburn in view of Rieul discloses:
The method according to claim 6, wherein the device’s own barcode and the device’s own public key are displayed in the display of the device after providing the image data with the object and the digital signature. (Paragraph 16 of Cowburn, the image stored in the database with the matched digital signature is displayed to the user to allow a further visual check that the article is genuine. The image is displayed together with other relevant bibliographic data relevant to the article).
As per claim 19 Cowburn in view of Rieul discloses:
The method according to claim 7, wherein the device sends a further synchronization signal to the further device as soon as the device has captured the barcode and/or has stored the received image data. (Paragraph 21 of Rieul, it is possible to transmit an electronic document containing an electronic signature of the document between a device for presentation of the electronic document and the image-capture device without using a telecommunication network of the cable or radio type. An inspector can thus be informed whether or not the electronic document is valid in any place and/or any situation).
As per claim 20 Cowburn in view of Rieul discloses:
The device according to claim 13, wherein the device is a mobile device, a mobile phone, a portable computer, or a tablet computer, that has a camera for recoding image data and a wireless interface. (Paragraph 71 of Cowburn, the PC 34 may be a desktop or a laptop. As an alternative to a PC, other intelligent devices may be used, for example a personal digital assistant (PDA) or a dedicated electronics unit. The PIC 30 and PC 34 collectively form a data acquisition and processing module 36 for determining a signature of the article from the set of data points collected by the detectors 16a).
Claim 11 is rejected under 35 U.S.C. 103 as being unpatentable over Cowburn (US Pub. No. 2012/0170069) in view of Rieul (US Pub. No. 2018/0205556) and further in view of Wentz (US Pub. No. 2019/0312734).
As per claim 11:
The combination of Cowburn and Fraser teaches the method of generating the digital signature of an image data using a private key (see paragraph 25 of Cowburn) fails to disclose:
The method according to claim 1, wherein at least the device’s own private key is generated depending on a PUF of the device.
However, in the same field of endeavor, Wentz teaches this limitation as, (paragraph 24 of Wentz, secure proof may include be generated using a physically unclonable function and may utilize at least a random number generator (RNG), true random number generator (TRNG) or other source of entropy. For instance, and without limitation, an output of a PUF may be used to generate a private key for a digital signature as described above. Alternatively, or additionally, a PUF output may constitute a secret to be used as a basis for a zero-knowledge proof, which may be any zero-knowledge proof as described herein).
Therefore, it would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to modify the teaching of Cowburn and Fraser to include the above limitation using the teaching of Wentz in order to securely generate a digital signature using a secure device information (see paragraph 24 of Wentz).
Claim 17 is rejected under 35 U.S.C. 103 as being unpatentable over Cowburn (US Pub. No. 2012/0170069) in view of Rieul (US Pub. No. 2018/0205556) and further in view of Gisolfi (US Pub. No. 2018/0341775).
As per claim 17:
The combination of Cowburn and Rieul teaches the method of generating the digital signature of an image data using a private key (see paragraph 25 of Cowburn) fails to disclose:
The method according to claim 1, wherein capturing the barcode includes capturing a QR code.
However, in the same field of endeavor, Gisolfi teaches this limitation as, (paragraph 24 of Gisolfi, the privacy information 16, digital signatures 18 and/or unique ID 20 may be incorporated into a barcode or quick response (QR) code printed on a package, airline ticket or other substrate received from the SOR 10. In such a case, the second computing device 28 may include a scanner (e.g., camera and code recognition application) to capture the information).
Therefore, it would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to modify the teaching of Cowburn and Rieul to include the above limitation using the teaching of Gisolfi in order to generate a digital signature and present it in a secure form (see paragraph 24 of Gisolfi).
Conclusion
The prior art made or record and not relied upon is considered pertinent to applicant’s disclosure is Chandra (US Pub. No. 2020/0412555). Chandra’s reference discloses:
An anti-counterfeiting tag, system and method of manufacturing and authentication therefor are provided. The tag comprises a substrate; and a plurality of layers printed on at least a portion of the substrate; wherein one of said plurality of layers is configured to generate a self-forming three dimensional (3D) raised random pattern comprising physically unclonable function (PUF) and the other layers are configured to facilitate formation of the 3D pattern and/or to protect the formed 3D pattern.
Applicant's amendment necessitated the new ground(s) of rejection presented in this Office action. Accordingly, THIS ACTION IS MADE FINAL. See MPEP § 706.07(a). 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 TESHOME HAILU whose telephone number is (571)270-3159. The examiner can normally be reached M-F 8 a.m. - 5 p.m..
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If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Ali Shayanfar can be reached at (571) 270-1050. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/TESHOME HAILU/Primary Examiner, Art Unit 2434