DETAILED ACTION
Notice of Pre-AIA or AIA Status
The present application is being examined under the pre-AIA first to invent provisions.
Claim Rejections - 35 USC § 112
The following is a quotation of 35 U.S.C. 112(b):
(b) CONCLUSION.—The specification shall conclude with one or more claims particularly pointing out and distinctly claiming the subject matter which the inventor or a joint inventor regards as the invention.
The following is a quotation of 35 U.S.C. 112 (pre-AIA ), second paragraph:
The specification shall conclude with one or more claims particularly pointing out and distinctly claiming the subject matter which the applicant regards as his invention.
Claims 23-25, 28 and 30 are rejected under 35 U.S.C. 112(b) or 35 U.S.C. 112 (pre-AIA ), second paragraph, as being indefinite for failing to particularly point out and distinctly claim the subject matter which the inventor or a joint inventor (or for applications subject to pre-AIA 35 U.S.C. 112, the applicant), regards as the invention.
Claims 23-25, 28 and 30 and specifically claims 23, 28 and 30 are rejected under 35 U.S.C. 112(b) or 35 U.S.C. 112 (pre-AIA ), second paragraph, as being incomplete for omitting essential elements, such omission amounting to a gap between the elements. See MPEP § 2172.01.
Claims 23-25, 28 and 30 and specifically claims 23, 28 and 30 are rejected under 35 U.S.C. 112(b) or 35 U.S.C. 112 (pre-AIA ), second paragraph, as being incomplete for omitting essential structural cooperative relationships of elements, such omission amounting to a gap between the necessary structural connections. See MPEP § 2172.01.
The language “wherein said barcoded quality indicator includes a machine-readable visible pre- actuation state” doesn’t make sense in isolation.
Main issue is that the phrase “pre-actuation state” in a static barcode says very little when there is no discussion of what the actuation does. The pre-actuation state has meaning in the context of what the indicator will become upon actuation.
In other words, the examiner regards this limitation as incomplete and missing substantial context.
For the sake of examination on the merits under 35 USC 103 below, the limitation, “wherein said barcoded quality indicator includes a machine-readable visible pre- actuation state” will not be given patentable weight.
Claim Rejections - 35 USC § 103
The following is a quotation of pre-AIA 35 U.S.C. 103(a) which forms the basis for all obviousness rejections set forth in this Office action:
(a) A patent may not be obtained though the invention is not identically disclosed or described as set forth in section 102, if the differences between the subject matter sought to be patented and the prior art are such that the subject matter as a whole would have been obvious at the time the invention was made to a person having ordinary skill in the art to which said subject matter 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 pre-AIA 35 U.S.C. 103(a) are summarized as follows:
1. Determining the scope and contents of the prior art.
2. Ascertaining the differences between the prior art and the claims at issue.
3. Resolving the level of ordinary skill in the pertinent art.
4. Considering objective evidence present in the application indicating obviousness or nonobviousness.
This application currently names joint inventors. In considering patentability of the claims under pre-AIA 35 U.S.C. 103(a), the examiner presumes that the subject matter of the various claims was commonly owned at the time any inventions covered therein were made absent any evidence to the contrary. Applicant is advised of the obligation under 37 CFR 1.56 to point out the inventor and invention dates of each claim that was not commonly owned at the time a later invention was made in order for the examiner to consider the applicability of pre-AIA 35 U.S.C. 103(c) and potential pre-AIA 35 U.S.C. 102(e), (f) or (g) prior art under pre-AIA 35 U.S.C. 103(a).
Claims 23-25, 28 and 30 are rejected under pre-AIA 35 U.S.C. 103(a) as being unpatentable over Epshteyn et al.
Epshteyn et al. teaches in part,
[0025] FIG. 2 shows an exemplary item 120 having a number of bar codes 130 provided thereon, wherein certain barcodes 132(a)-(i) fall within field of view 122 of the scanner. Barcodes 132 are referred to as "potential barcodes" in that each of the barcodes within the field of view are potentially intended to be scanned by the user. That is, the user may intend to scan any of the discrete barcodes within field of view 122. The target barcode (e.g., 132(e)), is referred to as the "desired barcode," and the area including and immediately surrounding a barcode is referred to as the "barcode field." While barcodes 130 are illustrated as being of the same type (e.g., a particular one-dimensional code), the present invention is not so limited. Typical real-world items often include any number of different barcode types.
Thus, Epshteyn et al. makes clear that multiple different kinds of barcodes (which comply with different barcode standards) can be used together.
While it could be argued what a ‘quality indicator’ is, the examiner notes that the limitations of claim 23 add little substance to the phrase ‘quality indicator.’
(By contrast, see claim 26 which depends from claim 23. The limitations of claim 26 add substance to the idea of a ‘quality indicator’ and claim 26 is indicated as having allowable subject matter, as detailed below.)
Re claims 24 and 25: In the example of Epshteyn et al., different types of codes are might be readable by a single reader, it is also the case that for a ‘Typical real-world item’ that ‘include[s] any number of different barcode types’ some readers will only read one type of code while other readers will only read the other type.
Re claims 28 and 30: See discussions above. While it is debatable whether Epshteyn’s multiplicity of different kinds of codes can be used in ‘barcoded quality indicators’ and ‘product quality status outputs’ – there is little more in these claims to flesh out what those terms mean.
It is limitations like in claims 26-27 and claim 29, which clarify those terms and those claims will be allowable, below.
Allowable Subject Matter
Claims 26-27 and 29 are objected to as being dependent upon a rejected base claim, but would be allowable if rewritten in independent form including all of the limitations of the base claim and any intervening claims.
The prior art fails to teach in the context of the independent claims, the additional limitations, “wherein: said at least one first barcode includes: at least one barcode, operative, following activation of said barcoded quality indicator, to provide a first machine-readable indication prior to exceedance of at least one first barcode threshold and a second machine-readable indication following exceedance of said at least one first barcode threshold; and said at least one second barcode includes: at least one barcode, operative, following activation of said barcoded quality indicator, to provide a first machine-readable indication prior to exceedance of at least one second barcode threshold and a second machine-readable indication following exceedance of said at least one second barcode threshold.”
The Epshteyn et al. set of different code types (and other examples in the prior art showing the use of different code standards together) are not employed for detecting exceedance of certain thresholds in the manner claimed.
Conclusion
THIS ACTION IS MADE FINAL. 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 DANIEL A HESS whose telephone number is (571)272-2392. The examiner can normally be reached Monday through Friday, from 9 AM to 5 PM.
Examiner interviews are available via telephone, in-person, and video conferencing using a USPTO supplied web-based collaboration tool. To schedule an interview, applicant is encouraged to use the USPTO Automated Interview Request (AIR) at http://www.uspto.gov/interviewpractice.
If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Michael G. Lee can be reached at (571)272-2398. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/DANIEL A HESS/Primary Examiner, Art Unit 2876