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 .
Election/Restrictions
Applicant’s election without traverse of Group 1 (claims 1-5, 11-13, 16-18) in the reply filed on 12/01/2025 is acknowledged.
Information Disclosure Statement
The information disclosure statement (IDS) submitted on 07/18/2024 is in compliance with the provisions of 37 CFR 1.97. Accordingly, the information disclosure statement is being considered by the examiner.
Specification
The disclosure, filed 07/18/2024 (SUBSTITUTE SPECIFICATION- Clean Version) is objected to because of the following informalities:
Paragraphs 0010, 0029, 0068, 0088 and 00131 refer to “exterioceptively”, “exterioceptive”, etc. The Examiner will assume this is a typographical error and the intended spelling for these terms is based on the spelling of the base word exteroceptive. The specification must be corrected to spell “exterioceptive” correctly as “exteroceptive”, etc. See References Cited.
Paragraph 00117 refers to “prove- nance”. The Examiner will assume this is a typographical error and the intended term is ‘provenance’.
Paragraph 00119 refers to “dig- ital”. The Examiner will assume this is a typographical error and the intended term is ‘digital.
Appropriate correction is required.
Claim Objections
Claims 1-3, 11-13, 16-18 are objected to because of the following informalities:
Claims 1, 11, 16 recite the limitation “the read-word”. The Examiner will assume this is a typographical error and the intended spelling of this limitation is “the real-world”.
Claims 2, 12, 17 recite the limitation “exterioceptive sensors”. The Examiner will assume this is a typographical error and the intended spelling of this limitation is “exteroceptive sensors”. See References Cited.
Claims 3, 13, 18 recite “performing… one or more image processing, one or more computer vision processing”. This appears to be grammatically incorrect. The Examiner suggests reciting “performing… one or more image processing processes, one or more computer vision processing processes”.
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 1-5, 11-13, 16-18 are rejected under 35 U.S.C. 101 because the claimed invention is directed to an abstract idea (35 U.S.C. 101 Judicial Exception) without significantly more. The claims recite creating a representative digital asset from a real-world asset, comprising: “acquiring sensor data…”, “processing the sensor data…”, “creating a unique digital asset…”, which are directed to the abstract idea of mental processes. This judicial exception is not integrated into a practical application because the generically recited computer elements do not add a meaningful limitation to the abstract idea because they amount to simply implementing the abstract idea on a computer. The claims do not include additional elements that are sufficient to amount to significantly more than the judicial exception because the additional elements, when considered separately and in combination, do not add significantly more to the abstract idea, as they are well-understood, routine, conventional computer functions as recognized by the courts.
Based upon consideration of all the relevant factors with respect to the claimed invention as a whole, the claims are determined to be directed to an abstract idea without significantly more. The rationale for this determination is explained infra:
The following are Principles of Law:
A patent may be obtained for “any new and useful process, machine, manufacture, or composition of matter, or any new and useful improvement thereof”; 35 U.S.C. § 101. The Supreme Court has consistently held that this provision contains an important implicit exception: laws of nature, natural phenomena, and abstract ideas are not patentable; See Alice Corp. v. CLS Bank Int’l, 134 S. Ct. 2347, 2354 (2014); Gottschalk v. Benson, 409 U.S. 63, 67 (1972) (“Phenomena of nature, though just discovered, mental processes, and abstract intellectual concepts are not patentable, as they are the basic tools of scientific and technological work.”). Notwithstanding that a law of nature or an abstract idea, by itself, is not patentable, an application of these concepts may be deserving of patent protection; See Mayo Collaborative Servs. v. Prometheus Labs., Inc., 132 S. Ct. 1289, 1293–94 (2012). In Mayo, the Court stated that “to transform an unpatentable law of nature into a patent-eligible application of such a law, one must do more than simply state the law of nature while adding the words ‘apply it.’” Mayo, 132 S. Ct. at 1294 (citation omitted).
In Alice, the Court reaffirmed the framework set forth previously in Mayo “for distinguishing patents that claim laws of nature, natural phenomena, and abstract ideas from those that claim patent-eligible applications of these concepts.” Alice, 134 S. Ct. at 2355. The test for determining subject matter eligibility requires a first step of determining whether the claims are directed to a process, machine, manufacture, or composition of matter. If the claims are directed to one of the four patent-eligible subject matter categories, then the Examiner must perform a two-part analysis to determine whether a claim that is directed to a judicial exception recites additional elements that amount to significantly more than the exception. The first part of the second step in the analysis is to “determine whether the claims at issue are directed to one of those patent-ineligible concepts.” Id. If the claims are directed to a patent-ineligible concept, then the second part of the second step in the analysis is to consider the elements of the claims “individually and ‘as an ordered combination”’ to determine whether there are additional elements that “‘transform the nature of the claim’ into a patent-eligible application.” Id. (quoting Mayo, 132 S. Ct. at 1298, 1297). In other words, the second step in the analysis is to “search for an ‘inventive concept’‒ i.e., an element or combination of elements that is ‘sufficient to ensure that the patent in practice amounts to significantly more than a patent on the [ineligible concept] itself.’” Id. (brackets in original) (quoting Mayo, 132 S. Ct. at 1294). The prohibition against patenting an abstract idea “cannot be circumvented by attempting to limit the use of the formula to a particular technological environment or adding insignificant post-solution activity.” Bilski v. Kappos, 561 U.S. 593, 610–11 (2010) (citation and internal quotation marks omitted). The Court in Alice noted that “[s]imply appending conventional steps, specified at a high level of generality,” was not “enough” [in Mayo] to supply an “‘inventive concept.’” Alice, 134 S. Ct. at 2357 (quoting Mayo, 132 S. Ct. at 1300, 1297, 1294).
In the “2019 Revised Patent Subject Matter Eligibility Guidance” (2019 PEG), the USPTO has prepared revised guidance for use by USPTO personnel in evaluating subject matter eligibility based upon rulings by the courts.
The Examiner is bound by and applies the framework as set forth by the Court in Mayo and reaffirmed by the Court in Alice and follows the 2019 PEG for determining whether the claims are directed to patent-eligible subject matter.
Step 1: Are the claims at issue directed to a process, machine, manufacture, or composition of matter?
The Examiner finds that the claims are directed to one of the four statutory categories.
Step 2A – Prong One: Does the claim recite an abstract idea, law of nature, or natural phenomenon?
The Examiner finds that the claims are directed to the abstract idea of creating a representative digital asset from a real-world asset, comprising: “acquiring sensor data…”, “processing the sensor data…”, “creating a unique digital asset…”, which are directed to the abstract idea of mental processes.
Step 2A – Prong Two: Does the claim recite additional elements that integrate the Judicial Exception into a practical application?
The abstract idea is not integrated into a practical application because the generically recited computer elements do not add a meaningful limitation to the abstract idea because they amount to simply implementing the abstract idea on a computer.
In determining whether the abstract idea was integrated into a practical application, the Examiner has considered whether there were any limitations indicative of integration into a practical application, such as:
(1) Improvements to the functioning of a computer, or to any other technology or technical field; See MPEP § 2106.05(a)
(2) Applying or using a judicial exception to affect a particular treatment or prophylaxis for a disease or medical condition; See Vanda Memo (Recent Subject Matter Eligibility Decision: Vanda Pharmaceuticals Inc. v. West-Ward Pharmaceuticals)
(3) Applying the judicial exception with, or by use of, a particular machine; See MPEP § 2106.05(b)
(4) Effecting a transformation or reduction of a particular article to a different state or thing; See MPEP § 2106.05(c)
(5) Applying or using the judicial exception in some other meaningful way beyond generally linking the use of the judicial exception to a particular technological environment, such that the claim as a whole is more than a drafting effort designed to monopolize the exception; See MPEP § 2106.05(e) and Vanda Memo
The Examiner notes that claim features of: “acquiring sensor data…”, “processing the sensor data…”, “creating a unique digital asset…” does not improve the functioning of a computer or technical field, do not effect a particular treatment or prophylaxis for a disease or medical condition, do not apply or use a particular machine, do not effect a transformation or reduction of a particular article to a different state or thing, and do not apply or use the judicial exception in some other meaningful way beyond generally linking the use of the judicial exception to a particular technological environment, such that the claim as a whole is more than a drafting effort designed to monopolize the exception.
Instead, the claim features of creating a representative digital asset from a real-world asset merely use a general-purpose computer as a tool to perform the abstract idea (See MPEP § 2106.05(f)) and merely generally link the use of the abstract idea to a field of use (See MPEP § 2106.05(h)). Thus, the Examiner finds that the claimed invention does not recite additional elements that integrate the Judicial Exception into a practical application.
However, the Examiner notes subject matter disclosed in paragraphs [00118], of the specification as filed, related to recreating a real-world tangible asset from a Proxy, in this case a key. The Examiner finds that this subject matter most likely appears to recite elements that integrate the abstract idea into a practical application.
Step 2B: Is there something else in the claims that ensures that they are directed to significantly more than a patent-ineligible concept?
The claims, as a whole, require nothing significantly more than generic computer implementation or can be performed entirely by a human. The additional element(s) or combination of element(s) in the claims other than the abstract idea per se amount to no more than recitation of generic computer structure (e.g., computer system, hardware processor, non-transitory computer readable medium) that serves to perform generic computer functions (e.g., acquiring, processing, creating) that are well-understood, routine, and conventional activities previously known to the pertinent industry. The claimed sensor data, feature sets, attributes, and landmarks are all numbers, data structures, or datum. Each of these elements are individually dispositive of patent eligibility because of the following legal holdings:
“Data in its ethereal, non-physical form is simply information that does not fall under any of the categories of eligible subject matter under section 101.” Digitech Image Techs., LLC v. Electronics for Imaging, Inc., 758 F.3d 1344, 1350 (Fed. Cir. 2014).
The Supreme Court has also explained that “[a]bstract software code is an idea without physical embodiment,” i.e., an abstraction. Microsoft Corp. v. AT&T Corp., 550 U.S. 437, 449 (2007).
A claim that recites no more than software, logic, or a data structure (i.e., an abstract idea) – with no structural tie or functional interrelationship to an article of manufacture, machine, process or composition of matter does not fall within any statutory category and is not patentable subject matter; data structures in ethereal, non-physical form are non-statutory subject matter. In re Warmerdam, 33 F.3d 1354, 1361 (Fed. Cir. 1994); see Nuijten, 500 F.3d at 1357.
Furthermore, the claimed invention does not have a specific asserted improvement in computer capabilities, nor is it a specific implementation of a solution to a problem in the software arts; See Enfish, LLC v. Microsoft Corp., 822 F.3d 1327 (Fed. Cir. 2016).
Rather, the claims are merely directed towards the abstract idea of creating a representative digital asset from a real-world asset, which is similar to ideas that the courts have found to be abstract, as noted supra, and the claims are without a “practical application” or anything “significantly more”.
Considering each of the claim elements in turn, the function performed by the computer system at each step of the process does no more than require a generic computer to perform a well-understood, routine, and conventional activity at a high level of generality.
For example, processing the sensor data, creating the unique digital asset, performing one or more frequency analysis processes which has been found by the courts to be a well-understood, routine, conventional activity in computers; See e.g. Symantec, 838 F.3d at 1321, 120 USPQ2d at 1362 (utilizing an intermediary computer to forward information); TLI Communications LLC v. AV Auto. LLC, 823 F.3d 607, 610, 118 USPQ2d 1744, 1745 (Fed. Cir. 2016) (using a telephone for image transmission); OIP Techs., Inc., v. Amazon.com, Inc., 788 F.3d 1359, 1363, 115 USPQ2d 1090, 1093 (Fed. Cir. 2015) (sending messages over a network); buySAFE, Inc. v. Google, Inc., 765 F.3d 1350, 1355, 112 USPQ2d 1093, 1096 (Fed. Cir. 2014) (computer receives and sends information over a network). Similarly, acquiring sensor data is merely storing, updating and retrieving information in memory, which has been found by the courts to be a well-understood, routine, conventional activity in computers; See e.g. Versata Dev. Group, Inc. v. SAP Am., Inc., 793 F.3d 1306, 1334, 115 USPQ2d 1681, 1701 (Fed. Cir. 2015); OIP Techs., 788 F.3d at 1363, 115 USPQ2d at 1092-93.
Further note that the abstract idea of creating a representative digital asset from a real-world asset to which the claimed invention is directed has a prior art basis outside of a computing/technological environment, e.g., an artist observes an object and draws it by identifying unique landmarks on the object.
The prohibition against patenting an abstract idea “cannot be circumvented by attempting to limit the use of the formula to a particular technological environment or adding insignificant post-solution activity.” Bilski v. Kappos, 561 U.S. 593, 610–11 (2010) (citation and internal quotation marks omitted). The Court in Alice noted that “[s]imply appending conventional steps, specified at a high level of generality,” was not “enough” [in Mayo] to supply an “‘inventive concept.’” Alice, 134 S. Ct. at 2357 (quoting Mayo, 132 S. Ct. at 1300, 1297, 1294).
Viewed as a whole, the claims simply recite the steps of using generic computer components. The claims do not purport, for example, to improve the functioning of the computer system itself. Nor does it affect an improvement in any other technology or technical field. Instead, the claims amount to nothing significantly more than an instruction to implement the abstract idea using generic computer components. This is insufficient to transform an abstract idea into a patent-eligible invention.
Claim Rejections - 35 USC § 102
The following is a quotation of the appropriate paragraphs of 35 U.S.C. 102 that form the basis for the rejections under this section made in this Office action:
A person shall be entitled to a patent unless –
(a)(1) the claimed invention was patented, described in a printed publication, or in public use, on sale, or otherwise available to the public before the effective filing date of the claimed invention.
Claim(s) 1-5, 11-13, 16-18 is/are rejected under 35 U.S.C. 102(a)(1) as being anticipated by Withrow et al. (USP App Pub 2021/0399893; hereinafter Withrow).
Regarding claim 1, A method (Withrow: paragraph [0003], “This application pertains to methods, systems, and software to create and manage a database storing an associated digital file (“ADF”) securely linked to a physical object of value”) comprising:
acquiring sensor data (Withrow: FIG. 1, scanner 102; paragraph [0222], “Broadly, any device that can sense and capture either electromagnetic radiation or mechanical wave that has traveled through an object or reflected off an object or any other means to capture surface or internal structure of an object is a candidate to create a “scan” of an object”) from a real-world tangible asset (Withrow: paragraph [0065], “physical object 100 may be presented to a scanner 102 to acquire image data”; paragraph [0035], “Physical object—includes any tangible object that is movable”);
processing the sensor data (Withrow: paragraph [0065], “The image data is processed by a process 104 to extract digital fingerprint(s) of the key object 100”) that is acquired to generate one or more feature sets that (Withrow: paragraph [0070], “In the sample ADF record 200, it includes data such as … digital fingerprint(s) of the physical object, block 228”; paragraph [0146], “digital fingerprints typically include information, preferably in the form of numbers or “feature vectors,” that describes features that appear at particular locations, called points of interest”) are representative of one or more attributes of the read-world tangible asset (Withrow: paragraph [0146], “In the 3-D case, the points of interest may be on the surface or in the interior of the object. In some applications, an object “feature template” may be used to define locations or regions of interest for a class of objects. Feature vectors may be extracted from the regions of interest. The digital fingerprints may be derived or generated from digital data of the object which may be, for example, image data”); and
creating a unique digital asset (Withrow: paragraph [0012], “creating an associated digital file (“ADF”) of the physical object in a secure datastore”) that mirrors (Withrow: paragraph [0051], “The digital fingerprints as utilized herein must characterize a single object, preserve little or no “group” or “class” information, be extractable solely from properties of the object itself, and be repeatable to such a degree that a match between two extractions approaches near-absolute certainty”) the one or more attributes of the real-world tangible asset (Withrow: paragraph [0038], “The ADF is securely linked to the actual physical object (and vice versa) by storing digital fingerprints of the physical object.”).
Regarding claim 2, Withrow teaches the method of claim 1, wherein the sensor data (Withrow: paragraph [0222], “Broadly, any device that can sense and capture either electromagnetic radiation or mechanical wave that has traveled through an object or reflected off an object or any other means to capture surface or internal structure of an object is a candidate to create a “scan” of an object”) is acquired from one or more proprioceptive sensors, one or more exterioceptive sensors (Withrow: paragraph [0222], “Thus a “scan” may refer to an image (or digital data that defines an image) captured by … a microphone (or other instruments for converting sound waves into electrical energy variations)”; Applicant specification as filed: paragraph [0068], “a smartphone microphone might be used as an extereoceptive sensor”), manually entered data, derived identifiable digital data, metadata, or combinations thereof.
Regarding claim 3, Withrow teaches the method of claim 1, wherein the processing (Withrow: paragraph [0065], “The image data is processed by a process 104 to extract digital fingerprint(s) of the key object 100”) comprises performing one or more frequency analysis processes, one or more cepstrum analytic processes, one or more filtering processes, one or more wavelet analysis processes, one or more spectral analysis processes, one or more image processing (Withrow: paragraph [0065], “The image data is processed by a process 104 to extract digital fingerprint(s) of the key object 100”), one or more computer vision processing, or combinations thereof.
Regarding claim 4, Withrow teaches the method of claim 1, wherein the one or more feature sets (Withrow: paragraph [0146], “digital fingerprints typically include information, preferably in the form of numbers or “feature vectors,” that describes features that appear at particular locations, called points of interest”) are resistant to perturbations (Withrow: paragraph [0151], “feature extraction or feature detection may be used to characterize points of interest. In an embodiment, this may be done in various ways. Two examples include Scale-Invariant Feature Transform (or SIFT) and Speeded Up Robust features (or SURF)… SIFT and SURF are most useful approaches to detect and matching of features because it is invariant to scale, rotate, translation, illumination, and blur” i.e., being invariant to translation means it is resistant to pertubations. See References Cited) so that one or more unique landmarks (Withrow: paragraph [0146], “features that appear at particular locations, called points of interest”) associated with the one or more attributes of the real-world tangible asset are uniquely identifiable (Withrow: paragraph [0012], “storing the digital fingerprint of the physical object in the ADF, so as to securely and uniquely link the ADF to the physical object in an unspoofable manner”).
Regarding claim 5, Withrow teaches the method of claim 4, wherein the one or more unique landmarks are extractable (Withrow: paragraph [0151], “feature extraction or feature detection may be used to characterize points of interest. In an embodiment, this may be done in various ways. Two examples include Scale-Invariant Feature Transform (or SIFT) and Speeded Up Robust features (or SURF)”) without prior knowledge or human intervention (Withrow: paragraph [0153], “Features may be point, line, edges, and blob of an image etc. There are areas as image registration, object tracking, and object retrieval etc. that employ a system or processor to detect and match correct features” i.e., feature extraction is executed by a processor; paragraph [0021], “FIG. 3A is a simplified flow diagram of an algorithm”; FIG. 3A, Generate or Acquire Digital Fingerprint of Particular Physical Object Step 302 i.e., SURF is an algorithm executed by a processor).
Re. claims 11-13, they recite analogous limitations as claims 1-3, respectively, and therefore are rejected for the same reasons.
Re. claims 16-18, they recite analogous limitations as claims 1-3, respectively, and therefore are rejected for the same reasons.
References Cited
Land et al. (USP App Pub 2020/0153822; hereinafter Land) is cited to show that it is common knowledge and well known in the prior art that SIFT and SURF are resistant to variations (Land: paragraph [0011], “Scale-Invariant Feature Transform (SIFT), Speeded Up Robust Features (SURF), or other feature detection approaches resistant to scale, rotation, translation and illumination variations”).
Ayyad et al. (USP App Pub 2023/0073681; hereinafter Ayyad) is cited to show that it is common knowledge and well known in the prior art that externally facing sensing is called exteroception or exteroceptive information (Ayyad: paragraph [0007], “external tactile sensing (exteroception)… exteroceptive information”).
Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to ADITYA SRIRAM whose telephone number is (703)756-1715. The examiner can normally be reached Su-Sa: 9:00 AM - 11:59 AM PST and 1:00 PM - 8 PM PST.
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/A.S./Examiner, Art Unit 2491
/WILLIAM R KORZUCH/Supervisory Patent Examiner, Art Unit 2491