DETAILED ACTION
Notice of Pre-AIA or AIA Status
1. The present application, filed on or after March 16, 2013, is being examined under the first inventor to file provisions of the AIA .
Related Application(s) – Prior Art of Record
2. The instant application is a continuation application (CON) of parent application 17/975,072 (now USPN 12,067,573). In accordance with MPEP §609.02 A.2 and §2001.06(b) (last paragraph), the prior art cited in the above parent application has been considered, and all documents cited or considered ‘of record’ in that application are considered cited or ‘of record’ in this application.
Claim Rejections – Double Patenting – (Anticipatory-type, Issued Patent)
3. Claims 1-9 of the instant application are rejected on the ground of anticipatory non-statutory double patenting, as being unpatentable over claims 1-12 of U.S. Patent No. 12,067,573 (the allowed parent application, noted above).
The instant claims are not identical to the issued claims, but they are not patentably distinct from the issued claims. Independent claims 1, 4 and 7 of the instant application are anticipated by independent claims 1, 5 and 9 of the ‘573 patent. The claims of the ‘573 patent include additional subject matter that is in essence a narrower “species” of the generic invention which is the subject matter of the instant claims 1, 4 and 7, since the instant claims include less than all of the limitations and/or subject matter of the issued independent claims of the ‘573 patent.
It has been held that a generic invention (i.e., an invention having broader claims that essentially include common recited features, but not all, of the narrower issued claims) is “anticipated” by a narrower issued “species” of the generic invention that is within the scope of the generic invention. (See, In re Goodman, 29 USPQ2d 2010 (Fed. Cir. 1993) Here, the subject matter of the independent claims of the instant application is broader than that of the independent claims of the issued patent since the independent claims of the instant application simply include less than all the claimed features of the issued independent claims. For example, the subject matter of XX in the independent claims of the ‘573 patent is not required by the instant independent claims. Therefore, independent claims 1, 4 and 7 of the instant application are anticipated by independent claims 1, 5 and 9 of the ‘573 patent.
Dependent claims 2, 3, 5, 6, 8 and 9 of the instant application include the substantially same subject matter found in claims 1, 4, 5, 8, 9 and 12 of the ‘573 patent.
A timely filed terminal disclaimer in compliance with 37 CFR §1.321(c) or §1.321(d) may be used here to overcome a rejection based on a non-statutory double patenting ground provided the reference application or patent either is shown to be commonly owned with this application, or claims an invention made as a result of activities undertaken within the scope of a joint research agreement. (See MPEP § 717.02 for applications subject to examination under the first inventor to file provisions of the AIA as explained in MPEP § 2159; See also, MPEP §§706.02(l)(1) - 706.02(l)(3) for applications not subject to examination under the first inventor to file provisions of the AIA )
A terminal disclaimer must be signed in compliance with 37 CFR §1.321(b). The USPTO Internet website contains terminal disclaimer forms which may be used. Please visit www.uspto.gov/forms/. The filing date of the application determines which form (e.g., PTO/SB/25, PTO/SB/26, PTO/AIA /25, or PTO/AIA /26) should be used. A web-based eTerminal Disclaimer may be filled out completely online using web-screens. An eTerminal Disclaimer that meets all requirements is auto-processed and approved immediately upon submission. For more information about eTerminal Disclaimers, refer to http://www.uspto.gov/patents/process/file/efs/ guidance/eTD-info-I.jsp.
Claim Rejections - 35 USC § 103
4. 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.
5. Claims 1, 4 and 7 are rejected under 35 U.S.C. §103 as being unpatentable over Moses (US Patent Publication 2021/0082051 A1, hereinafter Moses) in view of Humbert et al. (US Patent Publication 2021/0345913 A1, hereinafter Humbert).
Regarding claim 4, Moses discloses:
A method performed by a computer, the method comprising: inputting one or more values included in data associated with an artwork of an artist to a machine learning model, wherein the machine learning model is generated based on training an artificial intelligence (Al) program with the one or more values which indicate features of artwork of the artist; and outputting an artist feature value associated with the artwork from the machine learning model [computer system (computer/servers) and various methods are described, where various artwork feature data is input to train an AI model (program) using machine learning such that the trained/generated AI model (machine learning) also outputs price data for a particular artwork by an artist (artist feature data associated with the artwork) – See e.g., at least Figs 1 and 13A-B (including associated text) and including at least ¶¶ 020-021, 065-066 and 071]
Moses substantially discloses the invention, but appears to not explicitly disclose that the data that is input to train the AI program is stroke data associated with an artwork, or that the one or more values used to train the AI program include: at least one of a brush stroke speed, a pen pressure value, a pen angle data, or time allocation of a pen touch state and a pen hover state. However, Humbert discloses a system and various methods for, among other things, solving the analogous problem of detecting authenticity of a signature of an individual via measurements of various technical aspects of pen stroke usage by the individual used in creating the signature, including detecting acquiring various stoke data, including pen pressure data and various pen motion data, and where the data is used to train an AI model. [Humbert, see e.g., at least Figs 3 and 8 (including associated text) and including at least ¶¶ 006, 021, 023 and 028] It would have been obvious to one of ordinary skill in the art at the time the application was filed to have included with the artist feature AI training system and method of Moses, the use of various pen motion and pen pressure data used to train an AI model for detecting authenticity of a hand-created work, as taught by Humbert, since the claimed invention is merely a combination of old elements, and in the combination each element merely would have performed the same function as it did separately, and one of ordinary skill in the art would have recognized that the results of the combination were predictable and usable to accomplish the invention. (See, KSR Int’l Co. v. Teleflex Inc., 550 U.S. 398 (2007), and MPEP §2143 I. A)
Since claims 1 and 7 are substantially directed to the features and subject matter of claim 4, these claims are rejected for the grounds and rationale used to reject claim 4.
6. Claims 2, 5 and 8 are rejected under 35 U.S.C. §103 as being unpatentable over Moses and Humbert, in further view of Sprigg et al. (US Patent Publication 2016/0078277 A1, hereinafter Sprigg).
Regarding claims 2, 5 and 8, Moses and Humbert substantially disclose the invention, including (as described above in regard to claim 4) inputting various artwork feature data to train an AI model (program) with machine learning capability to discern whether data input to the trained AI model which represents features of an artwork and/or a hand-drawn work is authentic, based on output from the AI model, but appears to not explicitly disclose that the artwork is associated with a series of pen touch coordinates indicating positions of a pen touch and a series of pen up coordinates indicating positions of a pen up, and includes inputting the series of pen touch coordinates and the series of pen up coordinates associated with the artwork to the machine leaning model, wherein the machine learning model is generated based on training the AI program with values which indicate features of artwork; and outputting an artwork feature value associated with the artwork from the machine leaning model.
Sprigg discloses a system and various methods used for authenticating a hand-made work (signature) of a user, including using various pressure sensors associated with a writing pen/stylus to detect and gather data for pen up and pen down coordinates to be used to compare such data to data representing an authentic signature of the user. [Sprigg, see e.g., at least Figs 1A, 1C, 4A-B and 5 (including associated text) and including at least the abstract and ¶¶ 041, 044 and 055] It would have been obvious to one of ordinary skill in the art at the time the application was filed to have included with the artist feature AI training system and method of Moses, the use of various pen motion and pen pressure data used to train an AI model for detecting authenticity of a hand-created work, as taught by Humbert, and the use of pen-up, pen-down, pen pause (hover) coordinate data to train an AI model and be input into the trained AI model for an artist feature value output as described in Moses (discussed above in regard to claim 4), as taught by Sprigg, since the claimed invention is merely a combination of old elements, and in the combination each element merely would have performed the same function as it did separately, and one of ordinary skill in the art would have recognized that the results of the combination were predictable and usable to accomplish the invention. (See, KSR Int’l Co. v. Teleflex Inc., 550 U.S. 398 (2007), and MPEP §2143 I. A)
7. Claims 3, 6 and 9 are rejected under 35 U.S.C. §103 as being unpatentable over Moses and Humbert in view of Sprigg, and in further view of Tadano (US Patent Publication 2013/0024698 A1, hereinafter Tadano).
Regarding claims 3, 6 and 9, Moses, Humbert and Sprigg substantially disclose the invention, but appears to not explicitly disclose embedding a watermark indicative of the artwork feature value into the artwork. However, Tadano discloses a system and various methods for embedding a watermark into digital content to verify the digital content, where the digital content could be any digital content expressed as a digital file that is to be embedded with the watermark, and the watermark could be a user or owner identification information for the digital content. [Tadano, see e.g., at least Figs 1 and 6 (including associated text) and including at least the abstract and ¶¶ 055-056, 126-128] It would be obvious to one of ordinary skill in the art at the time the application was filed that any artwork (painting) or signature could be scanned to produce digital content that represented the artwork or signature. It would also have been obvious to one of ordinary skill in the art at the time the application was filed to have included with the artist feature AI training system and method of Moses, the use of various pen motion and pen pressure data used to train an AI model for detecting authenticity of a hand-created work, as taught by Humbert, the use of pen-up, pen-down, pen pause (hover) coordinate data to train an AI model and be input into the trained AI model for an artist feature value output as described in Moses (discussed above in regard to claim 4), as taught by Sprigg, and the use of embedding a digital watermark on digital content to verify the digital content, as taught by Tadano, since the claimed invention is merely a combination of old elements, and in the combination each element merely would have performed the same function as it did separately, and one of ordinary skill in the art would have recognized that the results of the combination were predictable and usable to accomplish the invention. (See, KSR Int’l Co. v. Teleflex Inc., 550 U.S. 398 (2007), and MPEP §2143 I. A)
Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to Joseph W. King whose telephone number is (571) 270 -5776. The examiner can normally be reached Mon - Thur 7 AM - 3 PM ET. If attempts to reach the examiner by telephone are unsuccessful, the examiner's supervisor, Matthew Gart, can be reached at (571) 272-3955. The examiner’s fax phone number is (571) 270-6776.
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/JOSEPH W. KING/Primary Examiner, Art Unit 3696
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