DETAILED ACTION
This communication is a first Office Action Non-Final rejection on the merits. Claim 1 as originally filed are currently pending and are considered below.
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 .
Information Disclosure Statement
The information disclosure statement (IDS) submitted on August 19, 2024 is in compliance with the provisions of 37 CFR 1.97. Accordingly, the information disclosure statement is being considered by the examiner.
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.
Claim 1 is 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 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. 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 has 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.
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.
Claim 1 is rejected on the ground of nonstatutory double patenting as being unpatentable over claim 1 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 modifying 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.
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.
(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 is rejected under 35 U.S.C. 102(a)(1) as being 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 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, ¶ [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. ¶ [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 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, ¶ [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, ¶ [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).
Conclusion
The prior art made of record and not relied upon is considered pertinent to applicant's disclosure.
Christie et al., U.S. Patent Application Publication 2013/0091002 discusses systems and methods are provided for verifying the validity of a coupon to facilitate coupon redemption.
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