DETAILED ACTION
The present application is being examined under the first inventor to file provisions of the AIA . 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.
This Office Action is in response Applicant communication filed on 9/9/2024.
Claims
Claims 1-7 are currently pending in the application.
Priority
The present application is a CIP of application 17/528,458 which has a priority date of 11/17/2021. However application 17/528,458 does not support the limitation “the central computing device constructed and arranged to select a geographically separated imaging system from the plurality of geographically separated imaging system based upon properties of an image to be produced on a final substrate and a location and capability of the geographically separated imaging system to produce the image of the final substrate” in claim 1 of the present application. Therefore the present application claims 1-7 do not inherit the priority date of application 17/528,458 and instead get the priority date of its own filing date of 9/9/2024. The effective filing date of a claimed invention is determined on a claim-by-claim basis and not an application-by-application basis. When applicant files a continuation-in-part application, none of whose claims are supported by the parent application under pre-AIA 35 U.S.C. 112, first paragraph, the effective filing date is the filing date of the child CIP. Any prior art disclosing the invention or an obvious variant thereof having a critical reference date more than 1 year prior to the filing date of the child will bar the issuance of a patent under pre-AIA 35 U.S.C. 102(b) (See MPEP 2133.01).
Information Disclosure Statements
The Information Disclosure Statement (IDS) that was filed on 9/9/2024 has been considered.
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 5 and 7 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 pre-AIA the applicant regards as the invention. In this instant case,
Claim 5 recites “wherein said each geographically separated imaging systems comprises a trusted platform module constructed for imaging device authentication and integrity verification” (emphasis added). It is unclear whether “imaging device” is referring to “digital imaging device” as recited in claim 1 or a different non-digital imaging device.
Claim 7 recites “further comprising Hardware Security Modules (HSMs) and Fast Identity Online (FIDO) authentication devices that verify and secure financial transaction during the production and ordering of goods” (emphasis added). There is a lack of antecedent basis for “the production and ordering of goods” in the claims.
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 1-7 are rejected under 35 U.S.C. 101 because the claimed invention is directed to an abstract idea without significantly more.
In the instant case, claims 1-7 are directed to a system. Therefore, these claims fall within the four statutory categories of invention.
Claim 1 recites selecting an image producer based on specific criteria and protecting the image with a key assigned to the selected image producer. Specifically, the claim recites “…select a geographically separated imaging system form the plurality of geographically separated imaging systems based upon properties of an image to be produced on a final substrate and a location and capability of the geographically separated imaging system to produce the image on the final substrate”, which is grouped within the “Mental Processes” and “certain methods of organizing human activity” grouping of abstract ideas in prong one of step 2A of the Alice/Mayo test because the claims involve selecting an image producer based on specific criteria and protecting the image with a key assigned to the selected image producer which falls under the category of “concepts performed in the human mind (including an observation, evaluation, judgment, and opinion)” and “managing personal behavior or relationships or interactions between people (including social activities, teaching, and following rules or instructions)”. Accordingly, the claims recite an abstract idea (See pages 7, 10, Alice Corporation Pty. Ltd. v. CLS Bank International, et al., US Supreme Court, No. 13-298, June 19, 2014; MPEP § 2106.04(a)).
This judicial exception is not integrated into a practical application because, when analyzed under prong two of step 2A of the Alice/Mayo test, the additional element(s) of claim 1, such as the use of the central computing device, plurality of geographically separated imaging systems, computing device, digital imaging device, and digital printer, merely use(s) a computer as a tool to perform an abstract idea. Specifically, the central computing device, plurality of geographically separated imaging systems, computing device, digital imaging device, and digital printer perform(s) the steps or functions of selecting an image producer based on specific criteria and protecting the image with a key assigned to the selected image producer. The use of a processor/computer as a tool to implement the abstract idea does not integrate the abstract idea into a practical application because it requires no more than a computer performing functions that correspond to acts required to carry out the abstract idea. Further, the use of a unique key to encrypt the digital image and assigning an associated private key to the selected computing system is generally linking the use of the judicial exception to a particular technological environment (e.g. computing devices and printer peripherals) or field of use. The abstract idea of locking an image and providing an associated key to the selected image producer so that the selected image producer can access the image is being linked to a computing environment performing generic computer functions. The additional elements do not involve improvements to the functioning of a computer, or to any other technology or technical field (MPEP § 2106.05(a)), the claims do not apply the abstract idea with, or by use of, a particular machine (MPEP § 2106.05(b)), and the claims do not apply or use the abstract idea in some other meaningful way beyond generally linking the use of the abstract idea to a particular technological environment, such that the claim as a whole is more than a drafting effort designed to monopolize the exception (MPEP § 2106.05(e) and Vanda Memo). Therefore, the claims do not, for example, purport to improve the functioning of a computer. Nor do they effect an improvement in any other technology or technical field. Accordingly, the additional elements do not impose any meaningful limits on practicing the abstract idea, and the claims are directed to an abstract idea.
Claim 1 does/do not include additional elements that are sufficient to amount to significantly more than the judicial exception because, when analyzed under step 2B of the Alice/Mayo test (See MPEP § 2106.05), the additional element(s) of using a the central computing device, plurality of geographically separated imaging systems, computing device, digital imaging device, and digital printer to perform the steps amounts to no more than using a computer or processor to automate and/or implement the abstract idea of selecting an image producer based on specific criteria and protecting the image with a key assigned to the selected image producer. As discussed above, taking the claim elements separately, the central computing device, plurality of geographically separated imaging systems, computing device, digital imaging device, and digital printer perform(s) the steps or functions of the abstract idea. Viewed as a whole, the combination of elements recited in the claims merely recite the concept of selecting an image producer based on specific criteria and protecting the image with a key assigned to the selected image producer. Therefore, the use of these additional elements does no more than employ the computer as a tool to automate and/or implement the abstract idea. The use of a computer or processor to merely automate and/or implement the abstract idea cannot provide significantly more than the abstract idea itself (MPEP 2106.05(I)(A)(f) & (h)). Further, the use of use of key pairs to encrypt/decrypt image data are recited at a high level and are used for generally linking the use of the judicial exception (e.g. selecting an image producer based on specific criteria and protecting the image with a key assigned to the selected image producer) to a particular technological environment (e.g. computers) or field of use and is not indicative of an inventive concept. Therefore, the claim is not patent eligible.
The dependent claims 2-7 further describe the abstract idea.
Claims 2 recites the abstract idea of limiting a number of an image produced by the image producer. The user of a central computing device and imaging systems is merely using a computer as a tool to perform the abstract idea.
Claim 3 recites the abstract idea of recording transactions and quality control information. The use of the central computing device and the imaging systems is merely using a computer as a tool to perform the abstract idea. Further the use of the blockchain-based ledger is generally linking the abstract idea to a particular technological environment (e.g. blockchain).
Claim 4 recites a digital imaging management gateway (DIMG) that is used as a tool to perform the abstract idea.
Claims 5-7 recite the use of a trusted platform module, secure hardware module, hardware security modules, and fast identity online authentication devices to perform the abstract idea of authentication, verification, and authorization. The use of these modules/devices are merely using a computer as a tool to perform the abstract idea.
The dependent claims do not include additional elements that integrate the abstract idea into a practical application or that provide significantly more than the abstract idea. Therefore, the dependent claims are also not patent eligible.
Rejections under 35 § U.S.C. 103
The following is a quotation of 35 U.S.C. 103 which forms the basis for all
obviousness rejections set forth in this Office action:
A patent for a claimed invention may not be obtained, notwithstanding that the claimed invention is not identically disclosed as set forth in section 102 of this title, if the differences between the claimed invention and the prior art are such that the claimed invention as a whole would have been obvious before the effective filing date of the claimed invention to a person having ordinary skill in the art to which the claimed invention pertains. Patentability shall not be negated by the manner in which the invention was made.
This application currently names joint inventors. In considering patentability of the claims the examiner presumes that the subject matter of the various claims was commonly owned as of the effective filing date of the claimed invention(s) absent any evidence to the contrary. Applicant is advised of the obligation under 37 CFR 1.56 to point out the inventor and effective filing dates of each claim that was not commonly owned as of the effective filing date of the later invention in order for the examiner to consider the applicability of 35 U.S.C. 102(b)(2)(C) for any potential 35 U.S.C. 102(a)(2) prior art against the later invention.
Claims 1-4 are rejected under 35 U.S.C. 103 as being unpatentable over US 20230153397 A1 (“Xu1”) and US 20160241744 A1 (“Xu2”).
Per claim 1, Xu1 discloses:
a central computing device (e.g. The network central computing device (CCD) 500 communicates with a plurality of remote product image forming devices 901 through digital imaging management gateway 800) (Section [0019] and [0024]);
a plurality of geographically separated imaging systems, each geographically separated imaging system comprising a computing device and an associated digital imaging device, wherein at least one of the geographically separated imaging systems comprises a digital printer for printing ink comprising sublimation dye (e.g. The network central computing device (CCD) 500 communicates with a plurality of remote product image forming devices 901 through digital imaging management gateway 800. These devices belong to different producers 900 with technology varieties. For instance, various types of digital inkjet printers, 3D printers, embroidery machines, digital presses, cutter/contour-cutter/kiss-cutters, digital doming machines, engraving machines, and the like are used for imaging products with the original artwork) (Section [0007], [0024], [0029], and Fig. 2);
wherein the digital image is encrypted with a key that is unique to the digital image and is associated with a private key assigned to the selected geographically separated computing system (e.g. In another embodiment of the invention for producing digitally imaged products, the plurality of digital images is stored in a database and encrypted with a public key that is unique to each digital image as described above. A selected digital image from the plurality of digital images is decrypted by a private key assigned to an imaged product producer) (Section [0005], [0049], and [0050]).
Although Xu1 discloses a central computing device that communicates with a plurality of geographically separated imaging systems that produce the image on a final substrate by using a private key to decrypt the digital image, Xu1 does not specifically disclose:
the central computing device constructed and arranged to select a geographically separated imaging system from the plurality of geographically separated imaging systems based upon properties of an image to be produced on a final substrate and a location and capability of the geographically separated imaging system to produce the image on the final substrate.
However Xu2, in analogous art of cloud based printing services, discloses:
the central computing device constructed and arranged to select a geographically separated imaging system from the plurality of geographically separated imaging systems based upon properties of an image to be produced on a final substrate and a location and capability of the geographically separated imaging system to produce the image on the final substrate (e.g. The central computing device (CCD) chooses the geographically remote fulfillment printer as a function of factors such as the selected image and substrate, printer capabilities, and the consumer's location. Image quality and consistency is maintained by the central computing device (CCD) selecting an appropriate geographically remote computing device (RCD) and providing printer the appropriate instructions, rather than the instructions for printing being determined locally at the printer) (Section [0094]).
It would have been obvious to one of ordinary skill in the art as of the effective filing date of the claimed invention to modify the imaging system selection of Xu1 to use selection criteria, including properties of an image, location, and capability, as taught by Xu2, in order to achieve the predictable result of providing convenience to the user by automatically selecting a printer that meets their needs and is close to them so that they can more easily gather the final substrate.
Note: "Any invention described in a printed publication more than one year prior to the date of a patent application is prior art under Section 102(b), even if the printed publication was authored by the patent applicant." De Graffenried v. United States, 16 USPQ2d 1321, 1330 n.7 (Cl. Ct. 1990) (See MPEP 2133.02).
Per claim 2, Xu1/Xu2 discloses all the limitations of claim 1 above. Xu1 further discloses:
wherein the central computing device is constructed to limit a number of an image produced by the geographically separated imaging systems (e.g. The network imaging ecosystem of the present invention provides the ability to limit and control the number of copies of imaged products buyers/customers 700 are able to purchase. FIG. 4. When a purchase is made, a defined number of copies of imaged products decorated with the decrypted artwork image is locked and bundled with the distributed ledger or blockchain ledger through smart contract or chaincode) (Section [0042]).
Per claim 3, Xu1/Xu2 discloses all the limitations of claim 1 above. Xu1 further discloses:
further comprising a blockchain-based ledger constructed to record transactions and quality control information transmitted between the central computing device and the geographically separated imaging systems (e.g. Quality control information is recorded and secured such as by the use of a ledger bundle to ascertain immutable status and traceability throughout the entire imaging process that involves participants having various roles) (Section [0018], [0029], and [0037]).
Per claim 4, Xu1/Xu2 discloses all the limitations of claim 1 above. Xu1 further discloses:
further comprising a digital imaging management gateway (DIMG) connecting the central computing device to the geographically separated imaging systems (e.g. The network digital imaging management gateway (DIMG) 800 communicates with corresponding producer 900 by an authorized digital imaging device 901 to produce the permitted quantity of imaged products) (Section [0023]-[0026]).
Claim 5 are rejected under 35 U.S.C. 103 as being unpatentable over Xu1/Xu2, as applied to claim 1 above, in further view of US 20070098161 A1 (“Ibrahim”).
Per claim 1, although Xu1/Xu2 discloses geographically separated imaging systems for printing images, Xu1/Xu2 do not specifically disclose:
wherein said each geographically separated imaging systems comprises a trusted platform module constructed for imaging device authentication and integrity verification.
However Ibrahim, in analogous art of secure printing devices, discloses:
wherein said each geographically separated imaging systems comprises a trusted platform module constructed for imaging device authentication and integrity verification (e.g. The secure print command further initiates the encryption/authentication module 232 which encrypts the formatted print data from printer driver 238 (e.g., as encrypted document 254) using a public key from Trusted Platform Modules (TPM) 226 that matches the private key of the TPM 228 on printer 104) (Section [0014] and [0024]-[0026]).
It would have been obvious to one of ordinary skill in the art as of the effective filing date of the claimed invention to modify the imaging systems of Xu1/Xu2 to include the use of TPMs, as taught by Ibrahim, in order to achieve the predictable result of increasing security of the system so that only approved imaging devices can print the images.
Claims 6 and 7 are rejected under 35 U.S.C. 103 as being unpatentable over Xu1/Xu2, as applied to claim 1 above, in further view of US 20220029823 A1 (“Law”).
Per claim 6, although Xu1/Xu2 discloses a system for producing digitally imaged goods, Xu1/Xu2 do not specifically disclose:
further comprising an integrated secure hardware module constructed to handle cryptographic payment authorization.
However Law, in analogous art of secure transactions, discloses:
further comprising an integrated secure hardware module constructed to handle cryptographic payment authorization (e.g. In an example aspect, the device authenticator 105 includes a secure execution and secure storage environment, which can be implemented using one or more of: a Trusted Execution Environment (TEE); a secure element, a firewall; a software layer; a secure enclave; a Hardware Secure Module (HSM); etc. It will be appreciated that a TEE is a computing chip that, for example, exists on a processor device. It will be appreciated that a HSM is a separated computing appliance) (Section [0021], [0028]-[0030], [0090], and [0100]-[0105]).
It would have been obvious to one of ordinary skill in the art as of the effective filing date of the claimed invention to modify the imaging systems of Xu1/Xu2 to include the use of secure hardware modules, as taught by Law, in order to achieve the predictable result of increasing security of the system so that only authorized users can perform transactions and functions.
Per claim 7, although Xu1/Xu2 discloses a system for producing digitally imaged goods, Xu1/Xu2 do not specifically disclose:
further comprising Hardware Security Modules (HSMs) and Fast Identity Online (FIDO) authentication devices that verify and secure financial transactions during the production and ordering of goods.
However Law, in analogous art of secure transactions, discloses:
further comprising Hardware Security Modules (HSMs) and Fast Identity Online (FIDO) authentication devices that verify and secure financial transactions during the production and ordering of goods (e.g. In an example aspect, the device authenticator 105 includes a secure execution and secure storage environment, which can be implemented using one or more of: a Trusted Execution Environment (TEE); a secure element, a firewall; a software layer; a secure enclave; a Hardware Secure Module (HSM); etc. It will be appreciated that a TEE is a computing chip that, for example, exists on a processor device. It will be appreciated that a HSM is a separated computing appliance) (e.g. The authentication data about the user, for example, includes a device authentication private key (also referred to as a DA private key) associated with the user 101 and the device authenticator 105 of the device 100. In an example aspect of using a FIDO protocol, the DA private key is known as a FIDO private key) (Section [0021], [0028]-[0030], [0090], and [0100]-[0105]).
It would have been obvious to one of ordinary skill in the art as of the effective filing date of the claimed invention to modify the imaging systems of Xu1/Xu2 to include the use of HSMs and FIDO authentication devices as taught by Law, in order to achieve the predictable result of increasing security of the system so that only authorized users can perform transactions and functions.
Conclusion
The following prior art made of record and not relied upon is considered pertinent to applicant's disclosure:
US Publication Number 2001/0043357 A1 to OWA teaches a system and method that selects a printer based on properties and capability. US Publication Number 2015/0306824 A1 to Flores Mangas teaches a system and method that selects a printer based on location. US Publication Number 2003/0081788 A1 to Simpson teaches a system and method that encrypts an image with a public key and then a printer uses a private key to print the image.
Any inquiry concerning this communication or earlier communications from the examiner should be directed to TIMOTHY P SAX whose telephone number is (571) 272-2935. The examiner can normally be reached on M-F 8-4:30.
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/TS/
Examiner, Art Unit 3698
/PATRICK MCATEE/Supervisory Patent Examiner, Art Unit 3698