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 .
Claims Status
Claims 1-20 are pending and rejected.
Information Disclosure Statement
The information disclosure statements (IDS) submitted on 11/4/2024, 11/11/2024, 1/22/2025 and 4/14/2025 are in compliance with the provisions of 37 CFR 1.97. Accordingly, the information disclosure statements have been considered by the examiner.
Double Patenting
Non-Statutory 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 claims at issue 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); and 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 a nonstatutory 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 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).
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Claims 1-20 are rejected on the ground of nonstatutory obviousness-type double patenting as being unpatentable over claims 1-18 of US Patent No. 12,118,598 (Application No. 17/217,870).
Although the claims at issue are not identical, they are not patentably distinct from each other because the claims of the instant application are anticipated by the patented claims.
Specifically, the instant claims are anticipated by the patented claims of 12,118,598, as follows:
Instant claims
12,118,598 Patent (Claim 1)
1. A computer-implemented method comprising:
1. A computer-implemented method comprising:
receiving, by a service computer, a request, from a user computer, for a service with regard to a product;
receiving, by a service computer, a request, from a user computer, for a service with regard to a product;
wherein the request comprises information obtained by scanning, by the user computer, a token shown on the product;
wherein the request comprises information obtained by scanning, by the user computer, a token shown on the product;
translating the token to a hyperlink in a standard format that a plurality of service computers understands;
translating the token to a hyperlink in a standard format that a plurality of service computers understands;
wherein the token is generated based on, at least in part, a digital token that is created during a process of generating a digital design of a product and that indicates a location, at a data storage system, at which a plurality of key-value pairs for the digital design is stored;
wherein the token is generated based on, at least in part, a digital token that is created during a process of generating a digital design of the product and that indicates a location, at a data storage system, at which a plurality of key-value pairs for the digital design is stored;
wherein the token is a reference to a product description of the product, and is used in a process of manufacturing the product;
wherein the token is embedded into product description data associated with the digital design;
in response to receiving a request for the product corresponding to the digital design, transmitting the product description data with the token embedded in the product description data to a manufacturing entity to cause the manufacturing entity to:
extract the digital token from the product description data,
use the digital token to retrieve the plurality of key-value pairs from the location,
use the plurality of key-value pairs to generate manufacturing instructions for manufacturing the product corresponding to the digital design,
generate the token, and
affix the token to the product.
storing the hyperlink in the standard format;
storing the hyperlink in the standard format;
causing, by the service computer, displaying, on the user computer, a graphical user interface allowing selecting any of one or more customization options;
causing the user computer to perform:
determine whether the hyperlink indicates a domain name,
in response to determining that the hyperlink indicates a domain name:
display, on the user computer, a first graphical representation of a first website associated with the domain name,
establish a first communications connection between the user computer and the first website,
display, on the user computer, a first graphical user interface generated based on first data received from the first website and via the first communications connection, and allowing a user to select the service,
receive a service selection via the first graphical user interface;
transmit the service selection and the indication of the product from the user computer to the service computer;
in response to receiving, from the user computer, input for at least one of the one or more customization options for the service:
in response to receiving, by the service computer, the service selection for the service:
determining one or more customization options for the service;
causing, by the service computer, displaying, on the user computer, a graphical user interface allowing selecting any of the one or more customization options;
automatically generating adjusted input by adjusting the input for the at least one of the one or more customization options based on one or more manufacturing constraints;
in response to receiving, from the user computer, input for at least one of the one or more customization options for the service:
automatically generating adjusted input by adjusting the input for the at least one of the one or more customization options based on one or more manufacturing constraints;
transmitting, in real time, the adjusted input and the hyperlink associated with the service to either a first website or a second website to perform the service for the at least one of the one or more customization options; and
transmitting, in real time, the adjusted input and the hyperlink associated with the service to either the first website or the second website to perform the service for the at least one of the one or more customization options; and
providing, by the service computer, the service performed by either the first website or the second website according to the adjusted input provided for the at least one of the one or more customization options.
providing, by the service computer, the service performed by either the first website or the second website according to the adjusted input provided for the at least one of the one or more customization options;
Dependent claims 2-10 are anticipated by ‘598 as follows:
Instant claims
12,118,598 Patent Claims
Claim 2
Claim 2, 1
Claim 3
Claim 3
Claim 4
Claim 4
Claim 5
Claim 5
Claim 6
Claim 1
Claim 7
Claim 6
Claim 8
Claim 7
Claim 9
Claim 8
Claim 10
Claim 9
With regards to claims 11-20, all the limitations in computer-readable storage media claims 11-20 are closely parallel to the limitations of method claims 1-10 analyzed above and are rejected on the same bases.
These claims fully anticipate the independent claims of the instant application. See, e.g., In re Berg, 140 F.3d 1428, 46 USPQ2d 1226 (Fed. Cir. 1998). Moreover, the scope of the above noted claims in the instant application, if patented, would extend the grant/monopoly and are thereby properly rejected.
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, 7-15 and 17-20 are rejected under 35 U.S.C. 101 because the claimed invention is directed to a judicial exception (i.e., a law of nature, a natural phenomenon, or an abstract idea) without significantly more.
Step 1:
Claims 1-10 are directed to a method, which is a process. Claims 11-20 are directed to a non-transitory computer-readable storage medium, which is an apparatus. Therefore, claims 1-20 are directed to one of the four statutory categories of invention.
Step 2A (Prong 1):
Representative claim 1 sets forth the following limitations which recite the abstract idea of facilitating a collaboration platform:
receiving a request, from a user computer, for a service with regard to a product;
wherein the request comprises information obtained by scanning a token shown on the product;
translating the token to a hyperlink in a standard format that a plurality of service computers understands;
wherein the token is generated based on, at least in part, a digital token that is created during a process of generating a digital design of a product and that indicates a location, at a data storage system, at which a plurality of key-value pairs for the digital design is stored;
wherein the token is a reference to a product description of the product, and is used in a process of manufacturing the product;
storing the hyperlink in the standard format;
causing displaying a graphical user interface allowing selecting any of one or more customization options;
in response to receiving input for at least one of the one or more customization options for the service:
automatically generating adjusted input by adjusting the input for the at least one of the one or more customization options based on one or more manufacturing constraints;
transmitting, in real time, the adjusted input and the hyperlink associated with the service to either a first website or a second website to perform the service for the at least one of the one or more customization options; and
providing the service performed by either the first website or the second website according to the adjusted input provided for the at least one of the one or more customization options.
The recited limitations above set forth steps to facilitate a collaboration platform. These limitations amount to certain methods of organizing human activity, including commercial or legal interactions (e.g. advertising, marketing or sales activities or behaviors).
Such concepts have been identified by the courts as abstract ideas (see: MPEP 2106).
Step 2A (Prong 2):
Examiner notes that representative claim 1 recites additional elements such as a service computer, user computer, etc.
When taken individually and as a whole, the additional elements of claim 1 do not integrate the recited judicial exception into a practical application of the exception. The claim merely includes instruction to implement an abstract idea on a computer, or to merely use a computer as a tool to perform an abstract idea, while the additional elements do no more than generally link the use of a judicial exception to a particular field of technological environment or field of use.
Furthermore, this is also because the claim fails to (i) reflect an improvement in the functioning of a computer, or an improvement to other technology or technical field, (ii) implement a judicial exception with a particular machine, (iii) effect a transformation or reduction of a particular article to a different state or thing, or (iv) apply the judicial exception in some other meaningful way beyond generally linking the use of the judicial exception to a particular technological environment.
In view of the above, under Step 2A (Prong 2), claim 1 does not integrate the recited exception into a practical application (see again: MPEP 2106).
Step 2B:
When taken individually or as a whole, the additional elements of claim 1 do not provide an inventive concept (i.e. whether the additional elements amount to significantly more than the exception itself). As discussed above with respect to integration of the abstract idea into a practical application, the additional element of using a processor to perform the steps 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. Certain additional elements also recite well-understood, routine, and conventional activity (See MPEP 2106.05(d)).
Even if considered as an ordered combination, the additional elements of claim 1 do not add anything further than when they are considered individually.
In view of the above, claim 1 does not provide an inventive concept under step 2B, and is ineligible for patenting.
Dependent claims 2-5 and 7-10 recite further complexity to the judicial exception (abstract idea) of claim 1, such as by further defining the steps for facilitating a collaboration platform. Thus, each of claims 2-5 and 7-10 are held to recite a judicial exception under Step 2A (Prong 1) for at least similar reasons as discussed above.
Therefore, dependent claims 2-5 and 7-10 do not add “significantly more” to the abstract idea. The dependent claims recite additional functions that describe the abstract idea and only generally link the abstract idea to a particularly technological environment, and applied on a generic computer. Further, the additional limitations fail to provide an improvement to the functioning of the computer, another technology, or a technical field.
Even when viewed as an ordered combination, the dependent claims simply convey the abstract idea itself applied on a generic computer and are held to be ineligible under Steps 2A/2B for at least similar rationale as discussed above regarding claim 1.
The analysis above applies to all statutory categories of invention. Regarding independent claim 11 (medium), the claim recites substantially similar limitations as set forth in claim 1. As such, claim 11 and its dependent claims 12-15 and 17-20 are rejected for at least similar rationale as discussed above.
Potentially Allowable Subject Matter
Claims 1-20 are allowable over the prior art, though the Double Patenting and rejection under 35 USC 101 still apply. The following is an examiner’s statement of reasons for allowance:
Upon review of the evidence at hand, it is hereby concluded that the totality of the evidence, alone or in combination, neither anticipates, reasonably teaches, nor renders obvious the below noted features of the applicant's invention. Claims 1-20 are allowable as follows:
Claims 1 and 11:
wherein the token is generated based on, at least in part, a digital token that is created during a process of generating a digital design of a product and that indicates a location, at a data storage system, at which a plurality of key-value pairs for the digital design is stored;
wherein the token is a reference to a product description of the product, and is used in a process of manufacturing the product;
The most germane prior art made of record includes Bowen (U.S. Pre-Grant Publication No. 2019/0108292) and Mu et al. (U.S. Pre-Grant Publication No. 2009/0108057) (“Mu”).
While Bowen and Mu disclose many of the limitations as claimed in claims 1 and 11, Bowen and Mu do not disclose wherein the token is generated based on, at least in part, a digital token that is created during a process of generating a digital design of a product and that indicates a location, at a data storage system, at which a plurality of key-value pairs for the digital design is stored; and wherein the token is a reference to a product description of the product, and is used in a process of manufacturing the product.
Bowen teaches a computer-aided design system enables physical articles to be customized via printing or embroidering and enables digital content to be customized and electronically shared including receiving a service request including a hyperlink, transmitting the hyperlink, receiving customization options for the service and customizing the service (see at least: Bowen, Fig. 2D; para [0009], [0031], [0062], [0064]). However, Bowen fails to incorporate wherein the token is generated based on, at least in part, a digital token that is created during a process of generating a digital design of a product and that indicates a location, at a data storage system, at which a plurality of key-value pairs for the digital design is stored; and wherein the token is a reference to a product description of the product, and is used in a process of manufacturing the product.
Mu teaches systems and methods that include using quick response (QR) codes with mobile devices for providing interactive applications and services to a user via the mobile devices including scanning a token, translating the token to a hyperlink and storing the hyperlink (see at least: Mu, Figs. 1, 4; para [0017], [0019]-[0021], [0024]). However, Mu also fails to incorporate wherein the token is generated based on, at least in part, a digital token that is created during a process of generating a digital design of a product and that indicates a location, at a data storage system, at which a plurality of key-value pairs for the digital design is stored; and wherein the token is a reference to a product description of the product, and is used in a process of manufacturing the product.
Furthermore, the combination of Bowen and Mu also fails to teach wherein the token is generated based on, at least in part, a digital token that is created during a process of generating a digital design of a product and that indicates a location, at a data storage system, at which a plurality of key-value pairs for the digital design is stored; and wherein the token is a reference to a product description of the product, and is used in a process of manufacturing the product, as is required by the claims.
Additionally, the NPL article “ARTag, a fiducial marker system using digital techniques,” (cited in the 11/4/2024 IDS) discloses a system that uses digital coding theory to produce embedded markers with low false detection rates. Although the article discusses improved performance of a fiducial marker system through the reduction of false positive rates during encoding and decoding processes, the article fails to contemplate wherein the token is generated based on, at least in part, a digital token that is created during a process of generating a digital design of a product and that indicates a location, at a data storage system, at which a plurality of key-value pairs for the digital design is stored; and wherein the token is a reference to a product description of the product, and is used in a process of manufacturing the product, as is required by the claims. Therefore, the cited NPL article does not render the claimed invention novel or non-obvious.
The examiner further emphasizes the claims as a whole and hereby asserts that the totality of the evidence fails to set forth, either explicitly or implicitly, an appropriate rationale for further modification of the evidence at hand to arrive at the claimed invention. The combination of features as claimed would not have been obvious to one of ordinary skill in the art as combining various references from the totality of the evidence to reach the combination of features as claimed would require a substantial reconstruction of the Applicant's claimed invention relying on improper hindsight bias.
It is thereby asserted by the examiner that, in light of the above and in further deliberation over all the evidence at hand, that the claims are allowable as the evidence at hand does not anticipate the claims and does not render obvious any further modification of the references to a person of ordinary skill in the art.
Any comments considered necessary by applicant must be submitted no later than the payment of the issue fee and, to avoid processing delays, should preferably accompany the issue fee. Such submissions should be clearly labeled “Comments on Statement of Reasons for Allowance.”
Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to ANAND LOHARIKAR whose telephone number is 571-272-8756. The examiner can normally be reached Monday through Friday, 9am – 5pm.
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/ANAND LOHARIKAR/Primary Examiner, Art Unit 3689