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 .
Response to Amendment
Regarding the newly added limitations, the applicant argues in part,
“Guajardo Merchan does not teach that the method therein can be applied to a physical object selected from the group consisting of a product and an intermediate stage thereof, a commodity, or a machine instead of a document. Notably, the object in Guajardo Merchan needs to be translucent to light so that the external light can project through the physical object and the fibers therein are illuminated, Paragraph [0023], and the random distribution of fibers serve as physical unclonable functions (PUFs) that can be used as a security feature of a challenge-response authentication scheme, see Endress at Paragraph [0007]. Guajardo Merchan does not teach how the method therein could be applied to other physical objects that are not translucent such as a physical object selected from the group consisting of a product and an intermediate stage thereof, a commodity, or a machine. Accordingly, Guajardo Merchan does not teach or suggest all the limitations of claim 1, as amended, and withdrawal of the obviousness rejection of claim 1 is respectfully requested.”
The examiner notes that Gupta et al. (US 2020/0082235) overcomes this limitation. In particular, Gupta et al. a range of surface features that constitute Physically Uncloneable Functions (PUFs):
“[0026] FIG. 1 illustrates the PUF 3D random pattern obtained by using araldite spray paint coatings, in accordance with the subject matter of the present invention.
[0027] FIG. 2 illustrates the PUF 3D random pattern obtained by using final touch spray paint coatings, in accordance with the subject matter of the present invention.
[0028] FIG. 3 illustrates the PUF 3D random pattern obtained by using DOTCOM spray paint coatings, in accordance with the subject matter of the present invention.
[0029] FIG. 4 illustrates the PUF 3D random pattern obtained by using araldite spray paint coatings, in accordance with the subject matter of the present invention.
[0030] FIG. 5 illustrates the PUF 3D random pattern obtained by drop casting dispersion of clay particles in water, an acrylic paint of any color and adhesive for coatings, in accordance with the subject matter of the present invention.
[0031] FIG. 6 illustrates the PUF 3D random pattern obtained by crackle nail polish (top row) and crackle paint (bottom row), in accordance with the subject matter of the present invention.
[0032] FIG. 7 illustrates the PUF 3D random pattern obtained by stencil printed mixture of clay particles in water, an acrylic paint and adhesive with additional three colors sprayed on the cracked pattern, in accordance with the subject matter of the present invention.”
Thus, surface features can be employed for the uncloneable function, necessitating surface scans. However Gupta’s features are introduced rather than naturally occurring.
Chen et al. (US 7,878,398) teaches that randomly occurring features in a label can be used for unique identification (an unclonable function). Chen et al. notably teaches “utilizing randomly occurring features of a label (whether embedded or naturally inherent)” indicating that the features can be naturally occurring surface features.
Withdrawal of 35 USC 112 Rejection
The applicant has noted in the recent response,
“Claims 1, 11, and 18 were rejected as indefinite for reciting "and the features are detected by an electronic device in the entire spectral range of up to 3000 nm" because "up to 3000 nm" could include a range of values and does not require 3000 nm to be reached. By the present amendment, claims 1, 11, and 18 have been amended to delete this limitation.”
Thus, the 35 USC 112 rejections have been rendered moot and are hereby withdrawn.
Claim Rejections - 35 USC § 103
The following is a quotation of 35 U.S.C. 103 which forms the basis for all obviousness rejections set forth in this Office action:
A patent for a claimed invention may not be obtained, notwithstanding that the claimed invention is not identically disclosed as set forth in section 102, if the differences between the claimed invention and the prior art are such that the claimed invention as a whole would have been obvious before the effective filing date of the claimed invention to a person having ordinary skill in the art to which the claimed invention pertains. Patentability shall not be negated by the manner in which the invention was made.
The factual inquiries for establishing a background for determining obviousness under 35 U.S.C. 103 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.
This application currently names joint inventors. In considering patentability of the claims the examiner presumes that the subject matter of the various claims was commonly owned as of the effective filing date of the claimed invention(s) absent any evidence to the contrary. Applicant is advised of the obligation under 37 CFR 1.56 to point out the inventor and effective filing dates of each claim that was not commonly owned as of the effective filing date of the later invention in order for the examiner to consider the applicability of 35 U.S.C. 102(b)(2)(C) for any potential 35 U.S.C. 102(a)(2) prior art against the later invention.
Claims 1-2, 6-13 and 15-20 are rejected under 35 U.S.C. 103 as being unpatentable over Guajardo Merchan et al. (US 2016/0232734) in view of Gupta et al. (US 2020/0082235) and Chen et al. (US 7,878,398).
Re claim 1:
Guajardo Merchan et al.’s figure 1 is especially relevant.
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Guajardo Merchan et al. teaches in part,
“[0018] …
During operation, the external illumination source 120 emits light that projects through the thickness of the sheet 108 to illuminate features within the sheet 108. The optical sensor 104 produces digital images of the sheet 108, including the illuminated features, the registration marks 112 and a printed barcode 116.
[0019] In FIG. 1, the sheet of sheet 108 includes registration marks 112 that are printed on the sheet. The optical sensor 104 generates pictures of the sheet 108 including the registration marks 112 to enable the processor 106 to orient the images of the sheet 108 even when the optical sensor 104 takes pictures of the sheet 108 from different positions and angles. In the embodiment, of FIG. 1, the sheet 108 includes the optional printed barcode 116 or other encoding mark that includes an encoded copy of the feature vector for features in the image of the sheet of paper, optional error correction data, and a digital signature of the feature vector and error correction information from the signing party that recipient uses to validate the authenticity of the sheet 108. The barcode 116 is printed on the sheet 108 after the system 100 generates the feature vector. A receiving party decodes the data in the printed barcode 116 to verify the authenticity of the sheet using the data that are encoded in the barcode 116.”
Guajardo Merchan et al. further teaches:
“[0034] In the embodiment of FIG. 1, the recipient uses the optical sensor 104 and processor 106 to authenticate the sheet 108 based on the feature vectors in the non-cloneable features of the sheet 108 and the signature information that is encoded in the printed barcode 116.”
From all this several things are clear:
The imaged sheet area (between the orientation markers 112) has non-cloneable features (typically intrinsic variances such as in the materials that are not replicable).
These features form a set of feature vectors that make up a clear and unique identity.
This set of features and a signature are encoded in the printed barcode 116 that is printed on a second area on the surface of the object.
Regarding the limitations added with the 9/4/2025 amendment:
“whereby the features are production inaccuracies on the defined first area and the production inaccuracies include unintentional and intrinsic variances of the defined first area of the physical object in relation to the defined first area of the identical physical objects and in relation to its original digital image, but do not cover variances that have been deliberately introduced onto the surface of the physical object by the manufacturer or issuer”
This closely fits with para 0030 of Guajardo Merchan et al.
In particular, para 0030 teaches in part,
“In one embodiment, the feature vector is a fixed-length set of binary data that is encoded based on the pixels in the image data that depict fibers and other random elements in the sheet 108 that cannot be replicated in a practical manner in another sheet of paper. Non-cloneable features of interest in a sheet of paper or other translucent article include features that are perceptible in photographic images of the article in question, such as digital photographic images of paper or other translucent articles when an external illumination source 120 projects light through the article. The image 214 depicts an example of a random arrangement of fibers in a sheet of paper that are included in the region of interest for the image. While different images of the same sheet of paper are similar but not perfectly identical, the feature vector is encoded in a manner that enables regeneration of similar feature vectors with tolerance for the variations that occur between multiple images of the same sheet of paper, while still enabling the processor 106 to distinguish between two different sheets of paper that have different features.”
These features such as individual paper fibers are ’unintentional and intrinsic variances’ that are not reproducible and are uniquely identifying.
Guajardo Merchan et al. may fail to read the “surface of a physical object, which is selected from the group consistinq of a product and an intermediate stage thereof, a commodity, or a machine” because this objects are generally not transparent.
Gupta et al. (US 2020/0082235) overcomes this limitation. In particular, Gupta et al. a range of surface features that constitute Physically Uncloneable Functions (PUFs):
“[0026] FIG. 1 illustrates the PUF 3D random pattern obtained by using araldite spray paint coatings, in accordance with the subject matter of the present invention.
[0027] FIG. 2 illustrates the PUF 3D random pattern obtained by using final touch spray paint coatings, in accordance with the subject matter of the present invention.
[0028] FIG. 3 illustrates the PUF 3D random pattern obtained by using DOTCOM spray paint coatings, in accordance with the subject matter of the present invention.
[0029] FIG. 4 illustrates the PUF 3D random pattern obtained by using araldite spray paint coatings, in accordance with the subject matter of the present invention.
[0030] FIG. 5 illustrates the PUF 3D random pattern obtained by drop casting dispersion of clay particles in water, an acrylic paint of any color and adhesive for coatings, in accordance with the subject matter of the present invention.
[0031] FIG. 6 illustrates the PUF 3D random pattern obtained by crackle nail polish (top row) and crackle paint (bottom row), in accordance with the subject matter of the present invention.
[0032] FIG. 7 illustrates the PUF 3D random pattern obtained by stencil printed mixture of clay particles in water, an acrylic paint and adhesive with additional three colors sprayed on the cracked pattern, in accordance with the subject matter of the present invention.”
Thus, surface features can be employed for the uncloneable function, necessitating surface scans. However Gupta’s features are introduced rather than naturally occurring.
Chen et al. (US 7,878,398) teaches that randomly occurring features in a label can be used for unique identification (an unclonable function). Chen et al. notably teaches “utilizing randomly occurring features of a label (whether embedded or naturally inherent)” indicating that the features can be naturally occurring surface features.
In view of Gupta et al. and Chen et al. it would have been obvious to employ surface features and surface scanning for the many cases of reading unique surface features on objects that are not transparent. Chen in particular teaches that such features can be naturally occurring.
Re claim 2: As para 0034 of Guajardo Merchan et al. notes the surface features that are imaged are ‘non-cloneable features.’ This conventionally means intrinsic surface variations that arise from material variability which are not duplicable.
From paragraph 0030: “Non-cloneable features of interest in a sheet of paper or other translucent article include features that are perceptible in photographic images of the article in question, such as digital photographic images of paper or other translucent articles when an external illumination source 120 projects light through the article. The image 214 depicts an example of a random arrangement of fibers in a sheet of paper that are included in the region of interest for the image.”
Re claim 6:
As Guajardo Merchan et al. teaches:
A hash is represented by an algorithm:
“[0021] During a first stage of an authentication process, the sending party uses the system 100 to identify non-cloneable features in the article 108 and to generate a cryptographic signature of a feature vector or hashed value corresponding to the non-cloneable features.”
Re claim 7: See discussions above.
Re claim 8:
Guajardo Merchan et al. teaches:
[0031] In one configuration, the process 200 generates a digital signature of the feature vector (block 216). Using a public key infrastructure (PKI) system that is well known to the art, the signing party uses a secret key that is known only to the signing party in conjunction with a signature algorithm to generate a cryptographically secure signature of the feature vector and any other data, such as ECC data, that are required to validate the authenticity of the paper. Due to the nature of PKI cryptographic systems, the signature can be distributed freely without compromising the integrity of the private signing key. In one embodiment of the process 200, the digital signature, feature vector, and any other data that are required to validate the authenticity of the document are printed on the sheet in the form of a barcode or other encoded marking that can be easily read and interpreted by another computing device (block 220). The barcode is typically printed on a margin area of the sheet that is outside the region containing the features that form the basis of the feature vector.
Re claim 9: See figure 1 of Guajardo Merchan et al. The code 116 adjoins the area 140.
Re claim 10: See figure 1 of Guajardo Merchan et al.
Re claims 11 and 12: See discussions re claim 1 above.
Re claim 13: It is understood that the steps must be done in software and not by hand.
Re claims 15-20: See discussions above.
Claims 3-5 and 14 are rejected under 35 U.S.C. 103 as being unpatentable over Guajardo Merchan et al./Gupta et al./Chen et al. as applied to claim 1 above, in view of Endress et al. (US 20190334730).
Re claim 3:
Guajardo Merchan et al. fails to teach that the PUF (physically unclonable function) I smade with ink.
Endress et al. teaches a similar configuration in which a PUF can be made using different inks, including notably (para 0026) fluorescent inks.
In view of the teachings of Endress et al., it would have been obvious to create the PUF using inks in order to have a feature that is more visible or clearly identifiable as compared with something like paper fibers.
Re claim 4: Endress et al. teaches: “[0026] According to a first preferred embodiment the PUF comprises an up-converting dye (UCD), preferably a plurality of different converting dyes. A UCD is a dye that shows the effect of photon up-conversion (UC), which is a process in which the sequential absorption of two or more photons leads to the emission of light at shorter wavelength than the excitation wavelength. It is an anti-Stokes-type emission. A typical example for such a process is the conversion of infrared light to fluorescent visible light. Materials by which up-conversion can take place often contain ions of d-block and f-block elements of the periodic system. Examples of these ions are Ln3+, Ti2+, Ni2+, Mo3+, Re4+, Os4+, and so on. Such materials typically comprise a relatively low portion of vibrionic spectral broadening and thus show fluorescence in very narrow bands of the electromagnetic spectrum. Using a variety of different combinations, i.e. mixes, of various up-converting substances, it is possible to generate huge number of distinguishable individual spectrums.”
Re claim 5: Endress et al. teaches:
[0074] According to related preferred embodiments of any one or both of the methods of the fifth and sixth aspects, the respective second reading result comprises one or more of the following information: (i) location information pertaining to a location where the second digital signature was acquired by the reader device; (ii) authentication information of a user of the reader device; (iii) time and/or date information indicating the point in time at which the second digital signature was acquired by the reader device; (iv) a product identification, serial number, and/or batch number of an object being marked by the marking; (v) an expiration date of an object being marked by the marking.
It would have been obvious at the time of the invention to include more different kinds of information for the value of more comprehension and informative product labeling and identification.
Re claim 14: See discussion re claim 4, above.
Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to DANIEL A HESS whose telephone number is (571)272-2392. The examiner can normally be reached Monday through Friday, from 9 AM to 5 PM.
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If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Michael G. Lee can be reached at (571)272-2398. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/DANIEL A HESS/Primary Examiner, Art Unit 2876