DETAILED ACTION
Amendment received on July 6, 2026, has been acknowledged. Claims 2-20 have been added and amendments to claim 1 have been entered. Therefore, claims 1-20 are pending.
Response to Arguments
Applicant's arguments filed July 6, 2026, have been fully considered but they are not persuasive. Applicant argues: “Accordingly, Applicants submit that the instant claims are not directed towards a patent ineligible mental process, and the Examiner has failed to meet their prima facie burden to show that the instant claims are patent ineligible under Prong 1 of Step 2A of the 2019 PEG”.
Examiner respectfully disagrees. Claim 1 is directed toward a validation device that includes generic computer components such as a memory and a processor performing generic computer functions such as storing computer readable instructions and executing computer readable instructions respectively. The combination of the memory and processor does not provide for any improvement to the functioning of the validation device.
Claim 1 further includes “receiving encoded information from a scanning device”. If the scanning device is considered as an additional element, this additional element is recited as performing a well-understood routine, conventional activity in the field and adding insignificant extra-solution activity to the judicial exception. For example, a barcode or RFID scanner is configured to scan coded information and provide said coded information to a computer for further processing, in other words providing a pre-solution activity step of gathering data for use in a claimed process. In the instant case, applying rules to determine whether the encoded information is authentic and providing an output.
Additional if “outputting results” is interpreted to include a computer monitor or screen, then this is recited at a high‐level of generality (i.e., as a generic device performing a generic function of displaying) such that it amounts to no more than mere instructions to apply the exception using a generic computer component.
Accordingly, this additional element does not integrate the abstract idea into a practical application because it does not impose any meaningful limits on practicing the abstract idea. Similarly, a
computer monitor or screen would not be sufficient to amount to significantly more than the judicial
exception. As discussed above with respect to integration of the abstract idea into a practical application, the additional element of a display (such as a computer screen) amounts to no more than
mere instructions to apply the exception using a generic computer component. Mere instructions to
apply an exception using a generic computer component cannot provide an inventive concept.
Applicant argues: “…that the Examiner's Step 2A - Prong 2 analysis is improper because the Examiner has failed to consider the instant claims as a whole, and further fails to analyze whether the instant claims impose a "meaningful limit" on the alleged "mental process," judicial exception”.
Examiner respectfully disagrees. As originally submitted, the application contained a single claim directed toward a validation device having a memory, a processor and the ability to receive information from a scanning device. As stated in the previous office action the generic computer elements performed generic computer functions of storing and executing computer readable instructions and received a pre-solution activity from a scanning device. The newly added claims are analyzed below which further describe the abstract idea of determining whether a product is authentic.
Applicant argues: “Similar to claim 2 of Example 37, the instant claims recite operations that cannot be practically performed in the human mind and require specially encoded (e.g., encrypted) information which are read using a scanning device connected to specially programmed validation devices and/or remote servers, etc., for performing the operations recited in the instant claims. Moreover, the Applicants further submit that the patent eligible claim 2 of Example 37 is similar to at least claims 7-10 and 17-20 of the instant application, at least because these claims explicitly require the updating of the usage history of the product in the computer memory of the validation device, and thereby not being capable of being "practically performed in the human mind."
Examiner respectfully disagrees. The updated 101 analysis includes the overlapping abstract idea of certain method of organizing human activity, specifically, commercial or legal interaction. The claims are directed toward a validation device composed of generic computer components capable of receiving data from a scanner and applying a set of rules to determine a product authenticity. This is a legal interaction which would be performed within a business relationship in order to determine whether a product is authentic. If used for personal use, the user would utilize the results as proof within a legal matter to prove that a received product is authentic.
Claim 1 recites the reading of a code which could be performed by a user in comparison to a set of rules to determine whether the code, as claimed the validation device does not decode or decrypt the received information, the code is matched to a rule, and a determination is made as whether the product is authentic or not. The claims are mere instructions that compare a received code to a set of rules to apply the judicial exception.
Applicant argues: “…the instant claims clearly recite a technological improvement to conventional product authentication systems and therefore are "significantly more" than the alleged judicial exception”.
Examiner respectfully disagrees in part. Claims 6, 7, 9, 16, 17 and 19 recite eligible subject matter that is significantly more than the judicial exception such as utilizing an encryption key, decrypting the encoded information, storing usage history, associating results and updating the usage history in memory as well as within a remote server. However, independent claims 1 and 11 and the remaining dependents fall within the abstract idea grouping of mental processes and certain method of organizing human activity.
Applicant argues: “…the instant claims do not recite well-known, routine, or conventional and/or generic computer components, and therefore the instant claims are also patent eligible under Step 2B of the 2019 PEG.
Examiner respectfully disagrees. In the printed publication “Innovative QR Code System for Tamper-Proof Generation and Fraud-Resistant Verification” by Alsuhibany, it is old and well known within barcode technology the existence of fraudulent QR codes. Pg.2, 2.1 Barcodes: An Overview, states:
Barcodes are traditionally defined as machine-readable representations of data in the form of visual patterns that can be decoded using optical devices… barcodes are increasingly viewed as passive data carriers that interact with sensing technologies such as optical scanners, RFID systems, and camera-based readers to enable automatic identification and tracking.
Additionally, Bobbit et al., “Visual item verification for fraud prevention in retail self-checkout.” Utilizes the generic components of memory, processor and receiving encoded information from a scanner by describing the IBM System 170 self-checkout system.
The evidence provided above shows that each state the well understood routine activity of scanning barcodes and decoding encoded information to authenticate the scanned barcode. Therefore, the additional elements are well known routine and convention within the art of scanning barcodes.
Examiner notes, the claims as written stand rejected based on the 2019 Patent Eligibility Guidance. However, the invention itself as described in the specification has the technical underpinning to overcome the 35 USC 101 rejection and recommends amending independent claims 1 and 11 to recite patent eligible subject matter in view of the 2019 PEG. Examiner invites Applicant’s attorney for interview if guidance is needed.
Applicant argues: “Applicants submit that none of the information disclosed in paragraph 0021 is a "unique ID" of the product that has been scanned by the user as required by claim 1.”
Examiner respectfully disagrees. Claim 1 and Claim 11 recite:
receive encoded information scanned from a product using a scanning device, the encoded information including at least one unique ID.
The unique ID as described within the Applicant submitted Specification ¶ [0088]:
…may represent unique information (e.g., biometric information, a unique identifier (such as a social security number, a currency notes serial number, a credit card number, a bank account number, etc.), a one-time use coupon, a unique message, a unique special instruction, a unique and/or random computer-generated number, a unique and/or random computer-generated image, etc.).
In other words, the QR or barcode contains an unduplicated number. Although Paul ¶ [0021] teaches that the XID 109 may be a code that includes information, such as, for example, a manufacturer name, a merchandise name, a product size, a product color, a product price, and location (i.e., geographic information) of a product. Paul pg.6, ¶ [0180] further teaches the XID generation module 118 may receive a product name, design, size, color and other description associated with the product 108. At 132, the XID generation module 118 may generate, for example, a n-digit (e.g., 8 digits) number denoted an unencrypted XID, or UX at 133. The unencrypted XID 133 may be added to a XID package 134. The unencrypted XID 133 may follow a mathematical process to ensure that it is non-intuitive to duplicate. Therefore, Paul utilizes the information of a product to generate a nonduplicative number unique to each product.
Furthermore, Paul discloses the XID code may be used to determine a serial number of the product 108. Much like the example given in the Applicant submitted Specification, i.e., currency note serial number, the XID stores a unique ID in the form of a product serial number.
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 and 11 are rejected under 35 U.S.C. 101 because the claimed invention is directed to an abstract idea without significantly more. The claim(s) recite(s):
a memory configured to store computer readable instructions; and
at least one processor configured to execute the computer readable instructions to cause the device to,
receive encoded information scanned from a product using a scanning device, the encoded information including at least one unique ID,
determine a validation rule set associated with the product based on the at least one unique ID,
determine whether the product is authentic using the determined validation rule set, and output results of the product authentication.
The steps of the method, as drafted, provide a process that, under its broadest reasonable
interpretation, covers evaluation such as determining whether a product is authentic by using a set of rules.
If a claim limitation, under its broadest reasonable interpretation, covers an observation, evaluation or opinion, then it falls within the “Mental Processes” grouping of abstract ideas. The claim limitation also covers legal interactions, by determining the authenticity of a product and also falls within the certain methods of organizing human activity. Accordingly, the claim recites an abstract idea.
The claims recite a memory and a processor recited at a high level of generality (i.e., as a generic device performing a generic function of storing and retrieving information in memory) such that it amounts to no more than mere instructions to apply the exception using a generic computer component.
The scanning device is also recited at a high level of generality of electronically scanning or extracting data from a physical document, which the courts have recognized as well-understood, routine and conventional functions.
Accordingly, these elements do not integrate the abstract idea into a practical
application because they do not impose any meaningful limits on practicing the abstract idea.
Similarly, a processor, memory and scanning device would not be sufficient to amount to significantly more than the judicial exception. As discussed above with respect to integration of the abstract idea into a practical application, the additional element of a scanning device amounts to no more than mere instructions to apply the exception using a generic computer component. Mere instructions to apply an exception using a generic computer component cannot provide an inventive concept. The claim is patent ineligible.
A similar analysis is applied to claim 11 which recites essentially the same abstract idea as in claim 1, with the additional elements of a validation device and scanning device. However, these elements are recited at a high‐level of generality (i.e., as a generic computing components performing generic functions) such that they amount to no more than mere instructions to apply the exception using generic computer. Accordingly, these additional elements do not integrate the abstract idea into a practical application because they do not impose any meaningful limits on practicing the abstract idea. The claim is directed to an abstract idea. Similarly, the claim does not include additional elements that are sufficient to amount to significantly more than the judicial exception. As discussed above with respect to integration of the abstract idea into a practical application, the additional elements of the scanning device and validation device amount to no more than mere instructions to apply the exception using generic computer components. Mere instructions to apply an exception using a generic computer component cannot provide an inventive concept. When considering the claim as a whole, the claim is not patent eligible.
Double Patenting
The nonstatutory double patenting rejection is based on a judicially created doctrine grounded in public policy (a policy reflected in the statute) so as to prevent the unjustified or improper timewise extension of the “right to exclude” granted by a patent and to prevent possible harassment by multiple assignees. A nonstatutory double patenting rejection is appropriate where the conflicting claims are not identical, but at least one examined application claim is not patentably distinct from the reference claim(s) because the examined application claim is either anticipated by, or would have been obvious over, the reference claim(s). See, e.g., In re Berg, 140 F.3d 1428, 46 USPQ2d 1226 (Fed. Cir. 1998); In re Goodman, 11 F.3d 1046, 29 USPQ2d 2010 (Fed. Cir. 1993); In re Longi, 759 F.2d 887, 225 USPQ 645 (Fed. Cir. 1985); In re Van Ornum, 686 F.2d 937, 214 USPQ 761 (CCPA 1982); In re Vogel, 422 F.2d 438, 164 USPQ 619 (CCPA 1970); In re Thorington, 418 F.2d 528, 163 USPQ 644 (CCPA 1969).
A timely filed terminal disclaimer in compliance with 37 CFR 1.321(c) or 1.321(d) may be used to overcome an actual or provisional rejection based on nonstatutory double patenting provided the reference application or patent either is shown to be commonly owned with the examined 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 MPEP § 2146 et seq. 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 filing of a terminal disclaimer by itself is not a complete reply to a nonstatutory double patenting (NSDP) rejection. A complete reply requires that the terminal disclaimer be accompanied by a reply requesting reconsideration of the prior Office action. Even where the NSDP rejection is provisional the reply must be complete. See MPEP § 804, subsection I.B.1. For a reply to a non-final Office action, see 37 CFR 1.111(a). For a reply to final Office action, see 37 CFR 1.113(c). A request for reconsideration while not provided for in 37 CFR 1.113(c) may be filed after final for consideration. See MPEP §§ 706.07(e) and 714.13.
The USPTO Internet website contains terminal disclaimer forms which may be used. Please visit www.uspto.gov/patent/patents-forms. The actual filing date of the application in which the form is filed determines what 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 www.uspto.gov/patents/apply/applying-online/eterminal-disclaimer.
Claims 1-20 is rejected on the ground of nonstatutory double patenting as being unpatentable over claim 1-20 of U.S. Patent No. 12,067,551. Although the claims at issue are not identical, they are not patentably distinct from each other because both cases are concerned with determining whether a product is authentic based on a validation rule set.
Claim 1 of the instant application teaches a validation device that receives encoded information and utilizes a validation rule set to determine whether a product is authentic and presenting the results. Claim 1 of the instant application fails to disclose modifying the encoded information and transmitting the modified information to at least one terminal.
Claim 1 of the issued patent recites a validation device that receives encoded information and utilizes a validation rule set to determine whether a product is authentic and modifying the encoded information and transmitting the modified information to at least one terminal.
It would have been obvious to one having skill in the art before the effective filing date, to modify the validation device recited in claim 1 of the instant application to include the ability to modify the encoded information and transmitting the modified information to at least one terminal as taught by the issued patent to improve the system in order to provide a modified encoded information to at least one terminal.
The subject matter claimed in the instant application is fully disclosed in the patent and is covered by the patent since the patent and the application are claiming common subject matter with substantially similar claim language.
As per Claim 2, ‘551 discloses the validation device of claim 1, wherein the encoded information is included in at least one of: a barcode, a quick response (QR) code, a radio frequency identification (RFID) chip, a near field communication (NFC) chip, a desired hologram, a unique image, unique audible signals, a magnetic strip, infra-red (IR) ink, ultra-violet (UV) ink, or any combinations thereof.
As per Claim 3, ‘551 discloses the validation device of claim 1, wherein the scanning device is at least one of: a barcode reader, a RFID scanner, an image scanner, an IR scanner, a UV scanner, a NFC scanner, a camera, or any combinations thereof.
As per Claim 4, ‘551 discloses the validation device of claim 1, wherein the at least one processor is further configured to execute the computer readable instructions to cause the device to perform the outputting of the results of the product authentication by:
outputting the results of the product authentication to at least one terminal, and the at least one terminal is at least one of, a point-of-sale terminal, a computer terminal, a server, a smartphone, a
tablet, or any combinations thereof. (Claim 4)
As per Claim 5, ‘551 discloses the validation device of claim 1, wherein the at least one processor is further configured to execute the computer readable instructions to cause the device to: transmit at least one of multimedia content, personalized content, security alerts, or any combinations thereof to a user device. (Claim 5)
As per Claim 6, ‘551 discloses the validation device of claim 1, wherein the received encoded information is encrypted using a first encryption key;
the memory is further configured to store a first decryption key associated with the first encryption key; and
the at least one processor is further configured to execute the computer readable instructions to cause the device to decrypt the received encoded information using the first decryption key. (Claim 6)
As per Claim 7, ‘551 discloses the validation device of claim 1, wherein the memory is further configured to store usage history information in association with a plurality of unique IDs, the plurality of unique IDs including the at least one unique ID; and
the at least one processor is further configured to execute the computer readable instructions to cause the device to, associate the results of the determining with the at least one unique ID in the memory; and
update the usage history information of the at least one unique ID in the memory. (Claim 7)
As per Claim 8, ‘551 discloses the validation device of claim 7, wherein the at least one processor is further configured to execute the computer readable instructions to cause the device to:
transmit the at least one unique ID, the results of the determining, and the usage history information to a remote server. (Claim 8)
As per Claim 9, ‘551 discloses the validation device of claim 7, wherein the at least one processor is further configured to execute the computer readable instructions to cause the device to:
update contents of the memory based on information received from a remote server, the updating including updating the usage history information associated with the plurality of unique IDs. (Claim 9)
As per Claim 10, ‘551 discloses the validation device of claim 7, wherein the at least one processor is further configured to execute the computer readable instructions to cause the device to, extract usage restriction information from the received encoded information; and
determine whether the product is authentic based on the usage restriction
information and the stored usage history information. (Claim 10)
As per Claim 11, ‘551 discloses a validation system comprising:
a scanning device; and
a validation device including, memory configured to store computer readable instructions, and the validation device is configured to execute the computer readable
instructions to, receive encoded information scanned from a product using the scanning device, the encoded information including at least one unique ID,
determine a validation rule set associated with the product based on the at least one unique ID,
determine whether the product is authentic using the determined validation rule set, and
output results of the product authentication. (Claim 11)
As per Claim 12, ‘551 discloses the validation system of claim 11, wherein the encoded information is included in at least one of: a barcode, a quick response (QR) code, a radio frequency identification (RFID) chip, a near field communication (NFC) chip, a desired hologram, a unique image, unique audible signals, a magnetic strip, infra-red (IR) ink, ultra-violet (UV) ink, or any combinations thereof. (Claim 12)
As per Claim 13, ‘551 discloses the validation system of claim 11, wherein the scanning device is at least one of:
a barcode reader, a RFID scanner, an image scanner, an IR scanner, a UV scanner, a NFC scanner, a camera, or any combinations thereof.
As per Claim 14, ‘551 discloses the validation system of claim 11, further comprising:
at least one terminal; and the validation device is further configured to, output the results of the product authentication to the at least one terminal, wherein the at least one terminal is at least one of, a point-of-sale terminal, a computer terminal, a server, a smartphone, a tablet, or any combinations thereof. (Claim 14)
As per Claim 15, ‘551 discloses the validation system of claim 11, further comprising:
at least one user device associated with the product; and
the validation device is further configured to transmit at least one of multimedia content, personalized content, security alerts, or any combinations thereof to the at least one user device. (Claim 15)
As per Claim 16, ‘551 discloses the validation system of claim 11, wherein the received encoded information is encrypted using a first encryption key; and the validation device is further configured to decrypt the received encoded information using a first decryption key associated with the first encryption key.
As per Claim 17, ‘551 discloses the validation system of claim 11, wherein the validation device is further configured to:
store usage history information in association with a plurality of unique IDs, the plurality of unique IDs including the at least one unique ID in the memory;
associate the results of the determining with the at least one unique ID in the memory; and
update the usage history information of the at least one unique ID in the memory.
As per Claim 18, ‘551 discloses the validation system of claim 17, further comprising:
at least one remote server; and
the validation device is further configured to, transmit the at least one unique ID, the results of the determining, and the usage history information to the at least one remote server. (Claim 18)
As per Claim 19, ‘551 discloses the validation system of claim 18, wherein the validation device is further configured to: update contents of the memory based on information received from the at least one remote server, the updating including updating the usage history information associated with the plurality of unique IDs. (Claim 19)
As per Claim 20, ‘551 discloses the validation system of claim 17, wherein the validation device is
further configured to:
extract usage restriction information from the received encoded information; and
determine whether the product is authentic based on the usage restriction information and the stored usage history information. (Claim 20)
Claim Rejections - 35 USC § 102
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 (i.e., changing from AIA to pre-AIA ) 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 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 are rejected under 35 U.S.C. 102(a) (1) as anticipated by Paul et al., U.S. Patent Application Publication 2014/0101063.
As per Claim 1, Paul et al., discloses a validation device comprising:
a memory configured to store computer readable instructions (Figure 12, Memory 406); and
at least one processor configured to execute the computer readable instructions to cause the device to (Figure 12, Processor 402),
receive encoded information scanned from a product using a scanning device (pg.7, 1 [0185] discusses an authenticity check may be performed by the mobile device 106 including a mobile version of the validation module 107 and the validation rules module 113. At 150, a QR code reader 151 of the mobile device 106 may be launched to read the XID 109 at 152),
the encoded information including at least one unique ID (pg.2, 1 [0021] discusses The XID 109 may be a code that includes information, such as, for example, a manufacturer name, a merchandise name, a product size, a product color, a product price, and location (i.e., geographic information) of a product pg. 1 [0191] discusses the XID code may be used to determine a serial number of the product 108 from the XID database 119),
determine a validation rule set associated with the product based on the at least one unique ID (pg.2, 1 [0021] discusses a client counterfeit detection application 110 on the mobile device 106 may read the XID 109, look up an appropriate rule and trigger an appropriate validation technique),
determine whether the product is authentic using the determined validation rule set (pg. 2, 1 [0021] discusses The validation module 107 may dynamically determine one or more of the validation techniques 112 that are suitable to determine authenticity of the product 108 The validation rules module 113 may use appropriate validation rules 115 based on which one or more of the foregoing validation techniques 112 is chosen by the validation module 107), and
output results of the product authentication (pg.7, 1 [0187] discusses a validation failed result may be sent to the client counterfeit detection application 110 on the mobile device 106. At 198, a counterfeit alert may be displayed on the mobile device 106).
As per Claim 2, Paul et al. discloses the device of claim 1, wherein the encoded information is included in at least one of: a barcode, a quick response (QR) code , a radio frequency identification (RFID) chip (pg.7, ¶ [0184] discusses final hybrid XID including the shuffled components and the inert filler bytes at 140 may be designated the XID 109, which may be used to generate a quick response (QR) code, a radio-frequency identification (RFID), bar code, or another type of code at 141 that is printed at 142 and applied to the product 108).
As per Claim 3, Paul et al. discloses the device of claim 1, wherein the scanning device is at least one of: a barcode reader (pg.9, ¶ [0194] discusses a QR code reader 151 of the mobile device 106 may be launched to read the XID 109).
As per Claim 4, Paul et al. discloses the device of claim 1, wherein the at least one processor is further configured to execute the computer readable instructions to cause the device to perform the outputting of the results of the product authentication by:
outputting the results of the product authentication to at least one terminal, and the at least one terminal is at least one terminal, and the at least one terminal is at least one of: a smartphone (pg.7, ¶ [0187] discusses a validation failed result may be sent to the client counterfeit detection application 110 on the mobile device 106).
As per Claim 5, Paul et al. discloses the device of claim 1, wherein the at least one processor is further configured to execute the computer readable instructions to cause the device to:
transmit at least one of: security alerts to a user device (pg.7, ¶ [0187] discusses a counterfeit alert may be displayed on the mobile device 106).
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 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.
Claim(s) 6 and 16 are rejected under 35 U.S.C. 103 as being unpatentable over Paul et al. U.S. Patent Application Publication 2014/0101063 in view of Doljack U.S. Patent #7,283,630.
As per Claim 6, Paul et al. pg.7, ¶ [0186] discloses a decryption module 171 that may be part of the validation module 107 may be launched to decrypt the m-digit encrypted part of the hybrid XID at 172)
However, Paul et al. fails to explicitly state the validation device of claim 1, wherein the received encoded information is encrypted using a first encryption key;
the memory is further configured to store a first decryption key associated with the first encryption key; and
the at least one processor is further configured to execute the computer readable instructions to cause the device to decrypt the received encoded information using the first decryption key.
Doljack teaches wherein the received encoded information is encrypted using a first encryption key (Col.10, lines 36-39 discusses the encryptor 18 uses an encryption key that is unique to each product manufacturer such that each manufacturer's products have their own unique encryption scheme…Col.10, lines 51-53 discusses the printer 26 prints each encrypted combination code on a single tag so that each tag contains an encrypted combination code as well as its bar code representation);
the memory is further configured to store a first decryption key associated with the first encryption key (Col.10, lines 54-62 discusses Inspection of the goods involves scanning the encrypted combination codes with a scanner 50 which is in electrical communication with a local computer such as computer 52 which contains the public encryption key which is associated with a particular distribution channel); and
the at least one processor is further configured to execute the computer readable instructions to cause the device to decrypt the received encoded information using the first decryption key (Col.11, lines 1-5 discusses The scanner 50 scans the encrypted combination code at step 88 88 and downloads it to the local computer 52 which contains a decryption key which is unique and provided by the manufacturer (the public key). The local computer 52 then decrypts the read encrypted code at step 90 and compares the decrypted code to the already known non-random code portion).
Therefore, it would have been obvious to one of ordinary skill in the art of product authentication before the effective filing date of the claimed invention to modify the system of Paul et al., to include the ability to store a respective decryption key as taught by Doljack to provide a method of verifying authenticity of goods uses combination codes that have a random portion and a non-random portion that includes at least a secret portion that is encrypted. Abstract
As per Claim 16 Paul et al. pg.7, ¶ [0186] discloses a decryption module 171 that may be part of the validation module 107 may be launched to decrypt the m-digit encrypted part of the hybrid XID at 172)
However, Paul et al. fails to explicitly state the validation system of claim 11, wherein the received encoded information is encrypted using a first encryption key; and the at least one processor is further caused to decrypt the received encoded information using a first decryption key associated with the first encryption key.
Doljack teaches wherein the received encoded information is encrypted using a first encryption key (Col.10, lines 36-39 discusses the encryptor 18 uses an encryption key that is unique to each product manufacturer such that each manufacturer's products have their own unique encryption scheme…Col.10, lines 51-53 discusses the printer 26 prints each encrypted combination code on a single tag so that each tag contains an encrypted combination code as well as its bar code representation);
and the at least one processor is further caused to decrypt the received encoded information using the first decryption key associated with the first encryption key(Col.11, lines 1-5 discusses The scanner 50 scans the encrypted combination code at step 88 and downloads it to the local computer 52 which contains a decryption key which is unique and provided by the manufacturer (the public key). The local computer 52 then decrypts the read encrypted code at step 90 and compares the decrypted code to the already known non-random code portion).
Therefore, it would have been obvious to one of ordinary skill in the art of product authentication before the effective filing date of the claimed invention to modify the system of Paul et al., to include the ability to store a respective decryption key as taught by Doljack to provide a method of verifying authenticity of goods uses combination codes that have a random portion and a non-random portion that includes at least a secret portion that is encrypted. Abstract
Claim(s) 7-10 and 17-20 are rejected under 35 U.S.C. 103 as being unpatentable over Paul et al. U.S. Patent Application Publication 2014/0101063 in view of Koster U.S. Patent Application Publication 2005/0108044.
As per Claim 7, Paul et al. discloses the validation device of claim 1. However, Paul et al. fails to disclose wherein the memory is further configured to store usage history information in association with a plurality of unique IDs, the plurality of unique IDs including the at least one unique ID; and
the at least one processor is further configured to execute the computer readable instructions to cause the device to, associate the results of the determining with the at least one unique ID in the memory; and
update the usage history information of the at least one unique ID in the memory.
Koster teaches wherein the memory is further configured to store usage history information in association with a plurality of unique IDs, the plurality of unique IDs including the at least one unique ID (pg.8, ¶ [0070] discusses the POS/POD system records the queries and the responses, as well as the time the query occurred); and
the at least one processor is further configured to execute the computer readable instructions to cause the device to, associate the results of the determining with the at least one unique ID in the memory (pg.8, ¶ [0070] discusses This provides a record of the transaction, and can be useful to forensically determine whether the package was authenticated or not); and
update the usage history information of the at least one unique ID in the memory (Figure 8, depicts Query Information 77, Recorded queries from POS/POD scanning devices).
As per Claim 8, Paul et al. discloses the validation device of claim 7. However, Paul et al. fails to disclose wherein the at least one processor is further configured to execute the computer readable instructions to cause the device to:
transmit the at least one unique ID, the results of the determining, and the usage history information to a remote server.
Koster teaches wherein the at least one processor is further configured to execute the computer readable instructions to cause the device to:
transmit the at least one unique ID to a remote server, the results of the determining, and the usage history information to a remote server (pg.8, ¶ [0068] discusses the query includes at least both the package identifier and authenticating data).
Therefore, it would have been obvious to one of ordinary skill in the art of product authentication before the effective filing date of the claimed invention to modify the system of Koster to include the ability to read and track data encoded within a code as taught by Koster to provide a system to send data to an external server as well as indicate other functions affecting the sale of the package or dispensing the contents. Abstract
As per Claim 9, Paul et al. discloses the validation device of claim 7, wherein the at least one processor is further configured to execute the computer readable instructions to cause the device to: update contents of the memory based on information received from a remote server (pg.3, ¶ [0051] discusses the validation rules 115 may be either locally updated at the mobile device 106 or updated and pushed by the server environment 101 to the mobile device 106),
the updating including updating the usage history information associated with the plurality of unique IDs (pg.3, ¶ [0052] discusses the validation rules update module 116 may include a counter that is incremented).
As per Claim 10, Paul et al. discloses the validation device of claim 7. However, Paul et al. fails to disclose wherein the at least one processor is further configured to execute the computer readable instructions to cause the device to, extract usage restriction information from the received encoded information; and determine whether the product is authentic based on the usage restriction information and the stored usage history information.
Koster teaches wherein the at least one processor is further configured to execute the computer readable instructions to cause the device to:
extract usage restriction information from the received encoded information (pg.7, ¶ [0066] discusses flags may be set if the drug is found to be defective, a shipment is reported to be stolen or lost, or if the current date is beyond the expiration date of the drug; and
determine whether the product is authentic based on the usage restriction information and the stored usage history information (pg.8, ¶ [0066] discusses a query requesting authentication is received, the flag would deny sale or dispensing of the drug based on it being past the expiration date…¶ [0071] discusses the system checks whether the authenticating data in the query matches the authenticating data in the database. If the results match, then the system proceeds to step 102 where any restriction flags are set. If restrictions flags are set (e.g., the expiration date of the drug has passed), then in step 104 the response is sent with information indicating the type of restriction).
Therefore, it would have been obvious to one of ordinary skill in the art of product authentication before the effective filing date of the claimed invention to modify the system of Koster to include the ability to read and track data encoded within a code as taught by Koster to provide a system to verify the authenticity of the package as well as indicate other functions affecting the sale of the package or dispensing the contents. Abstract
As per Claim 17, Paul et al. discloses the validation system of claim 11. However, Paul et al. fails to disclose wherein the at least one processor is further caused to:
store usage history information in association with a plurality of unique IDs, the plurality of unique IDs including the at least one unique ID in memory;
associate the results of the determining with the at least one unique ID in the memory; and
update the usage history information of the at least one unique ID in the memory.
Koster discloses wherein the at least one processor is further caused to:
store usage history information in association with a plurality of unique IDs, the plurality of unique IDs including the at least one unique ID in memory (pg.8, ¶ [0070] discusses the POS/POD system records the queries and the responses, as well as the time the query occurred);
associate the results of the determining with the at least one unique ID in the memory (pg.8, ¶ [0070] discusses This provides a record of the transaction, and can be useful to forensically determine whether the package was authenticated or not); and
update the usage history information of the at least one unique ID in the memory (Figure 8, depicts Query Information 77, Recorded queries from POS/POD scanning devices).
As per Claim 18, Paul et al. discloses the validation system of claim 17. However, Paul et al. fails to disclose wherein the at least one processor is further caused to:
transmit the at least one unique ID, the results of the determining, and the usage history information to a remote server.
Koster teaches wherein the at least one processor is further caused to:
transmit the at least one unique ID to a remote server (pg.8, ¶ [0068] discusses the query includes at least both the package identifier and authenticating data).
Therefore, it would have been obvious to one of ordinary skill in the art of product authentication before the effective filing date of the claimed invention to modify the system of Koster to include the ability to read and track data encoded within a code as taught by Koster to provide a system to send data to an external server as well as indicate other functions affecting the sale of the package or dispensing the contents. Abstract
As per Claim 19, Paul et al. discloses the validation system of claim 18, is further configured to:
update contents of the memory based on information received from the at least one remote server (pg.3, ¶ [0051] discusses the validation rules 115 may be either locally updated at the mobile device 106 or updated and pushed by the server environment 101 to the mobile device 106),
the updating including updating the usage history information associated with the plurality of unique IDs (pg.3, ¶ [0052] discusses the validation rules update module 116 may include a counter that is incremented).
As per Claim 20, Paul et al. discloses the validation system of claim 17. However, Paul et al. fails to disclose:
extract usage restriction information from the received encoded information; and
determine whether the product is authentic based on the usage restriction information and the stored usage history information.
Koster teaches extract usage restriction information from the received encoded information (pg.7, ¶ [0066] discusses flags may be set if the drug is found to be defective, a shipment is reported to be stolen or lost, or if the current date is beyond the expiration date of the drug; and
determine whether the product is authentic based on the usage restriction information and the stored usage history information (pg.8, ¶ [0066] discusses an query requesting authentication is received, the flag would deny sale or dispensing of the drug based on it being past the expiration date…¶ [0071] discusses the system checks whether the authenticating data in the query matches the authenticating data in the database. If the results match, then the system proceeds to step 102 where any restriction flags are set. If restrictions flags are set (e.g., the expiration date of the drug has passed), then in step 104 the response is sent with information indicating the type of restriction).
Therefore, it would have been obvious to one of ordinary skill in the art of product authentication before the effective filing date of the claimed invention to modify the system of Koster to include the ability to read and track data encoded within a code as taught by Koster to provide a system to verify the authenticity of the package as well as indicate other functions affecting the sale of the package or dispensing the contents. Abstract
Claim(s) 11-15 are rejected under 35 U.S.C. 102(a)(1) as anticipated by or, in the alternative, under 35 U.S.C. 103 as obvious over Paul et al., U.S. Patent Application 2014/0101063.
As per Claim 11, Paul et al. discloses validation system comprising:
a scanning device (pg.6, ¶ [0185] discusses a QR code reader 151 of the mobile device); and
a validation device including (Figure 1, XID Server 103),
memory configured to store computer readable instructions (Figure 12, Memory 400), and
the validation device is configured to execute the computer readable instructions to,
receive encoded information scanned from a product using a scanning device (pg.7, ¶ [0185] discusses an authenticity check may be performed by the mobile device 106 including a mobile version of the validation module 107 and the validation rules module 113. At 150, a QR code reader 151 of the mobile device 106 may be launched to read the XID 109 at 152),
the encoded information including at least one unique ID (pg.2, ¶ [0021] discusses The XID 109 may be a code that includes information, such as, for example, a manufacturer name, a merchandise name, a product size, a product color, a product price, and location (i.e., geographic information) of a product…pg.8, ¶ [0191] discusses the XID code may be used to determine a serial number of the product 108 from the XID database 119),
determine a validation rule set associated with the product based on the at least one unique ID (pg.2, ¶ [0021] discusses The validation module 107 may dynamically determine one or more of the validation techniques 112 that are suitable to determine authenticity of the product 108),
determine whether the product is authentic using the determined validation rule set (pg.2, ¶ [0021] discusses The validation module 107 may dynamically determine one or more of the validation techniques 112 that are suitable to determine authenticity of the product 108…The validation rules module 113 may use appropriate validation rules 115 based on which one or more of the foregoing validation techniques 112 is chosen by the validation module 107), and
output results of the product authentication (pg.7, ¶ [0186] discusses a validation failed result may be sent to the client counterfeit detection application 110 on the mobile device 106. If a validation failed result is sent to the client counterfeit detection application 110 on the mobile device 106, at 178, a counterfeit alert may be generated…validation passed result may be sent to the client counterfeit detection application 110 on the mobile device 106).
The claim recites a scanning device, the prior art applied teaches a mobile device with scanning capability and can be considered anticipated.
However, Paul et al., teaches a known technique of scanning encoded information using a mobile device.
This known technique is applicable to the system of Paul et al., as they both share characteristics and capabilities, namely, they are directed to scanning encoded information.
One of ordinary skill in the art before the effective filing date of the invention would have recognized that applying the known technique of Paul et al., would have yielded predictable results and resulted in an improved system. It would have been recognized that applying the technique of Paul et al. to the scanning device would have yielded predictable results because the level of ordinary skill in the art demonstrated by the reference applied shows the ability to incorporate a scanning feature within a mobile device.
As per Claim 12, Paul et al. discloses the validation system of claim 11, wherein the encoded information is included in at least one of: a barcode, a quick response (QR) code, a radio frequency identification (RFID) chip (pg.7, ¶ [0184] discusses final hybrid XID including the shuffled components and the inert filler bytes at 140 may be designated the XID 109, which may be used to generate a quick response (QR) code, a radio-frequency identification (RFID), bar code, or another type of code at 141 that is printed at 142 and applied to the product 108).
As per Claim 13, Paul et al. discloses the validation system of claim 11, wherein the scanning device is at least one of: a barcode reader (pg.9, ¶ [0194] discusses a QR code reader 151 of the mobile device 106 may be launched to read the XID 109).
As per Claim 14, Paul et al. discloses the validation system of claim 11, further comprising at least one terminal (Figure 1, Mobile Device 106); and
the validation device further configured to,
output the results of the product authentication to the at least one terminal, and the at least one terminal is at least one of: a smartphone (pg.7, ¶ [0187] discusses a validation failed result may be sent to the client counterfeit detection application 110 on the mobile device 106).
As per Claim 15, Paul et al. discloses the validation system of claim 11, further comprising:
at least one user device associated with the product (Figure 1, Mobile Device 106);
wherein the at least one processor is further caused to: transmit at least one of: security alerts to a user device (pg.7, ¶ [0187] discusses a counterfeit alert may be displayed on the mobile device 106).
Conclusion
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 ASHFORD S HAYLES whose telephone number is (571)270-5106. The examiner can normally be reached M-F 6AM-4PM with Flex.
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/ASHFORD S HAYLES/Primary Examiner, Art Unit 3627
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