Notice of Pre-AIA or AIA Status
The present application 18/863,007, filed on 11/05/2024 (or after March 16, 2013), is being examined under the first inventor to file provisions of the AIA (First Inventor to File).
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 application is a 371 of PCT/US2023/066750 filed on 05/09/2023
PCT/US2023/066750 has DOM PRO 63/364,917 filed on 05/18/2022
DETAILED ACTION
Claims 21-40 are pending in this application.
Examiner acknowledges applicant’s preliminary amendment canceled 1-20, added claims 21-40 filed on 11/5/2024
Drawings
The Drawings filed on 11/5/2024 are acceptable for examination purpose.
Information Disclosure Statement
The information disclosure statement (IDS) submitted on 11/5/2024 is in compliance with the provisions of 37 CFR 1.97. Accordingly, the information disclosure statement is being considered by the examiner
Priority
Acknowledgment is made of applicant’s claim for domestic priority application
U.S. Provisional Patent application serial number # 63/364,917 filed on 05/18/2022 under 35 U.S.C. 119 (e)
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 21-40 are rejected under 35 U.S.C. 101 because the claimed invention is directed to an abstract idea without significantly more. The judicial exception is not integrated into a practical application.
Claim 1-20 is/are rejected under 35 U.S.C. 101 because the claimed invention is directed to an abstract idea without significantly more. The judicial exception is not integrated into a practical application. The claims do not include additional elements that are sufficient to amount to significantly more than the judicial exception. The eligibility analysis in support of these findings is provided below, in accordance with the 2019 Revised Patent Subject Matter Eligibility Guidance, Federal Register (84 FR 50) on January 7, 2019 hereinafter 2019 PEG
Claim 21,34,39, A computer system for indexing custom-made coatings within a database, comprising:
one or more processors; and
one or more computer-readable media having stored thereon executable instructions that when executed by the one or more processors configure the computer system to perform at least the following:
maintain a primary database, the primary database comprising a mapping of characterization data to each coating of a set of coatings;
receive, from a user of the computer system, characterization data and identifier data associated with a custom-made coating, wherein the custom-made coating is not within the set of coatings;
store the characterization data and the identifier data associated with the custom-made coating in a secondary database, wherein the identifier data comprises:
a user-provided identifier for the custom-made coating, and
a user-provided index location, within a physical facility associated with the user of the computer system, for a physical panel coated with the custom-made coating; and
index the secondary database with the primary database such that the user of the computer system can simultaneously search both the secondary database and the primary database”, as drafted, is a process that, under its broadest reasonable interpretation, covers performance of the limitation in the mind but for the recitation of generic computer components. For example searching data, identifying coating, within the set of coating and like, in the context of this claim encompasses the user thinking mere matching coating appears mental processes practically performed in the human mind by observation, evaluation, judgment, and opinion, see MPEP 2106.04(a)(2) subsection III
If a claim limitation, under its broadest reasonable interpretation, covers performance of the limitation in the mind but for the recitation of generic computer components, then it falls within the “Mental Processes” grouping of abstract ideas set forth in the 2019 PEG. Accordingly, the claim recites an abstract idea.
With respect to Step 2A prong two of the 2019 PEG, the judicial exception is not integrated into a practical application. The additional elements are directed to method steps, however, these elements fail to integrate the abstract idea into a practical application because they fail to provide an improvement to the functioning of a computer or to any other technology or technical field, fail to apply the exception with a particular machine, fail to apply the judicial exception to effect a particular data structure of coating data set(s), index, searching that identify particular match, to effect a transformation of a particular article to a different state or thing, and fail to apply/use the abstract idea in a meaningful way beyond generally linking the use of the judicial exception to a particular technological environment.
Furthermore, although these elements have been fully considered, they are directed to the use of generic computing elements (para 0007,0021-0023,0025-0027,0031-0032 of the instant specification make it clear that the disclosed functionality is implemented on well-known computing systems and general purpose computing devices) to perform the abstract idea, which is not sufficient to amount to a practical application (as noted in the 2019 PEG) and is tantamount to simply saying "apply it" using a general purpose computer, which merely serves to tie the abstract idea to a particular technological environment (computer based operating environment) by using the computer as a tool to perform the abstract idea.
Since the analysis of Step 2A prong one and prong two results in the conclusion that the claims are directed to an abstract idea, additional analysis under Step 2B of the eligibility inquiry must be conducted in order to determine whether any claim element or combination of elements amount to significantly more than the judicial exception.
Step 2B. The claims do not include additional elements that are sufficient to amount to significantly more than the judicial exception. The additional method limitations are directed to a generic computer, at a very high level of generality and without imposing meaningful limitations on the scope of the claim. In addition para 0007,0021-0023,0025-0027,0031-0032 of the instant specification describe generic data structure (databases) off-the-shelf computer-based elements for implementing the claimed invention which does not amount to significantly more than the abstract idea and is not enough to transform an abstract idea into eligible subject matter. Such generic, high-level, and nominal involvement of a computer or computer-based elements for carrying out the invention merely serves to tie the abstract idea to a particular technological environment, which is not enough to render the claims patent-eligible, as noted at pg. 74624 of Federal Register/Vol. 79, No. 241, citing Alice, which in turn cites Mayo. Further, See, e.g., Alice Corp. Pty. Ltd. v. CLS Bank Int'l, 134 S. Ct. 2347, 2359-60, 110 USPQ2d 1976, 1984 (2014). See also OIP Techs. v. Amazon.com, 788 F.3d 1359, 1364, 115 USPQ2d 1090, 1093-94 (Fed. Cir. 2015) ("Just as Diehr could not save the claims in Alice, which were directed to 'implement[ing] the abstract idea of intermediated settlement on a generic computer', it cannot save O/P's claims directed to implementing the abstract idea of price optimization on a generic computer.") (citations omitted). See also, Affinity Labs of Texas LLC v. DirecTV LLC, 838 F.3d 1253, 1257-1258 (Fed. Cir. 2016) (mere recitation of a GUI does not make a claim patent-eligible); Intellectual Ventures I LLC v. Capital One Bank, 792 F.3d 1363, 1370 (Fed. Cir. 2015) ("the interactive interface limitation is a generic computer element".)
The additional elements are broadly applied to the abstract idea at a high level of generality ("similar to how the recitation of the computer in the claims in Alice amounted to mere instructions to apply the abstract idea of intermediated settlement on a generic computer,") as explained in MPEP § 2106.05(f)) and they operate in a well-understood, routine, and conventional manner.
MPEP § 2106.05 (d)(II) sets forth the following:
The courts have recognized the following computer functions as well-understood, routine, and conventional functions when they are claimed in a merely generic manner (e.g. at a high level of generality) as insignificant extra-solution activity.
Receiving or transmitting data over a network, e.g., using the Internet to gather data, Symantec...; TLI Communications LLC v. AV Auto. LLC...; OIP Techs., Inc., v. Amazon.com, Inc... ; buySAFE, Inc. v. Google, Inc...;
Performing repetitive calculations, Flook ... ; Bancorp Services v. Sun Life...;
Electronic recordkeeping, Alice Corp...; Ultramercial... ;
Storing and retrieving information in memory, Versata Dev. Group, Inc. v. SAP Am., Inc...;
Electronically scanning or extracting data from a physical document, Content Extraction and Transmission, LLC v. Wells Fargo Bank...; and
A web browser's back and forward button functionality, Internet Patent Corp. v. Active Network, Inc...
Courts have held computer-implemented processes not to be significantly more than an abstract idea (and thus ineligible) where the claim as a whole amount to nothing more than generic computer functions merely used to implement an abstract idea, such as an idea that could be done by a human analog (i.e., by hand or by merely thinking).
Claim 22,35,40, further elaborates
“receive, from the user of the computer system, a query for a coating which satisfies one or more requirements provided by the user of the computer system; and
display, to the user of the computer system, one or more coatings from the primary database and the secondary database which satisfy at least one of the one or more requirements, wherein displaying the one or more coatings is based at least in part on indexing the secondary database with the primary database”, which have been determined to be extra-solution activity that does not impose any meaningful limits on practicing the abstract idea. See MPEP 2106.05(b)(I). Even in combination, the additional details recited in these claims do not integrate the abstract idea into a practical application because they do not impose any meaningful limits on practicing the abstract idea.
Claim 23,36, further elaborates wherein the executable instructions include instructions that are executable to configure the computer system to display, to the user of the computer system, one or more digital images associated with the one or more coatings, the one or more digital images including a face angle, a flop angle, a flash angle, or any combination thereof”, which have been determined to be extra-solution activity that does not impose any meaningful limits on practicing the abstract idea. See MPEP 2106.05(b)(I). Even in combination, the additional details recited in these claims do not integrate the abstract idea into a practical application because they do not impose any meaningful limits on practicing the abstract idea.
Claim 24, further elaborates “wherein the query comprises a color code or spectrophotometric data”, which have been determined to be extra-solution activity that does not impose any meaningful limits on practicing the abstract idea. See MPEP 2106.05(b)(I). Even in combination, the additional details recited in these claims do not integrate the abstract idea into a practical application because they do not impose any meaningful limits on practicing the abstract idea.
Claim 25, further elaborates “wherein the secondary database is separate from the primary database”, which have been determined to be extra-solution activity that does not impose any meaningful limits on practicing the abstract idea. See MPEP 2106.05(b)(I). Even in combination, the additional details recited in these claims do not integrate the abstract idea into a practical application because they do not impose any meaningful limits on practicing the abstract idea.
Claim 26, further elaborates “wherein the executable instructions include instructions that are executable to configure the computer system to determine that the characterization data associated with the custom-made coating is different from the characterization data mapped to each coating of the set of coatings”, which have been determined to be extra-solution activity that does not impose any meaningful limits on practicing the abstract idea. See MPEP 2106.05(b)(I). Even in combination, the additional details recited in these claims do not integrate the abstract idea into a practical application because they do not impose any meaningful limits on practicing the abstract idea.
Claim 27, further elaborates “wherein the characterization data comprises an optical characterization of the custom-made coating”, which have been determined to be extra-solution activity that does not impose any meaningful limits on practicing the abstract idea. See MPEP 2106.05(b)(I). Even in combination, the additional details recited in these claims do not integrate the abstract idea into a practical application because they do not impose any meaningful limits on practicing the abstract idea.
Claim 28, further elaborates “wherein the optical characterization comprises spectrophotometric data”, which have been determined to be extra-solution activity that does not impose any meaningful limits on practicing the abstract idea. See MPEP 2106.05(b)(I). Even in combination, the additional details recited in these claims do not integrate the abstract idea into a practical application because they do not impose any meaningful limits on practicing the abstract idea.
Claim Rejections - 35 USC § 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, 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.
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 21-40 is/are rejected under 35 U.S.C. 103 as being unpatentable over Peden et al., (hereafter Peden), US Pub. No. 2020/0074686 published Mar, 2020 in view of Fujieda et al., (hereafter Fujieda), US Pub. No. 2010/0169255 published Jul, 2010
As to claim 21,34,39, Peden teaches system which including “a computer system for indexing custom-made coatings within a database, comprising: (Peden: fig 1A, 0044-0045 – Peden teaches computer architecture supporting color calibration, coating tool computer applications)
“one or more processors (Peden: fig 1A, element 144); and
“ one or more computer-readable media having stored thereon executable instructions that when executed by the one or more processors configure the computer system to perform at least the following” (Peden: fig 1A, 0119-0120 – Peden teaches both hardware and software particularly computer-readable medium and executed by hardware based processing unit detailed in para 0119-120):
“maintain a primary database, the primary database comprising a mapping of characterization data to each coating of a set of coatings” (Peden: fig 1A ,0048-0049 - Peden teaches color palate database, paint inventory database stored in a storage media element 152 particularly storing and mapping paint color data i.e., maintaining database records of paint formulations, colors and like);
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“receive, from a user of the computer system (Peden: fig 1,0044 – Peden teaches user interface configured to operate and/or use of color calibration and color correction application), characterization data and identifier data associated with a custom-made coating” (Peden: fig 1, , 0050-0051,0055-0056 – Peden teaches color information data that including paint formula information obtained from data storage device produces desired custom color, able to select, customize color that suits to various environmental conditions for example color temperature of indoor lighting, and other various temperature conditions to form custom made coating colors), “wherein the custom-made coating is not within the set of coatings” (Peden: 0049,0053-0054 - Peden teaches maintaining paint formulations, color records in a database, paint formulation selection involves measuring each color value, result may not match in adjust colors because series of offset color measurement values);
“store the characterization data and the identifier data associated with the custom-made coating in a secondary database, wherein the identifier data comprises” (Peden: 0052-0054 – Peden teaches target colors on display element 43 that including digital color image, target color measurement by the measurement device stored in color paint database):
“a user-provided identifier for the custom-made coating” (Peden: 0052-0054 – Peden teaches color image of a target color particularly color measured by a color measurement device to obtain color information to make custom made color from the samples of the primary colors for example red, green, blue, yellow as detailed in 0053), and
“a user-provided index location, within a physical facility associated with the user of the computer system, for a physical panel coated with the custom-made coating” (Peden: 0057-0060 – Peden teaches obtaining primary sample color providing the target color particularly obtaining suitably accurate color adjustment in defined environment to make custom made colors, stored in a database so that a selected, computing device capable of analyzing target color sample device displaying colors on the screen that is similar to physical sample of the target color; also computing device not only calculates color values, but also generates index more accurate values for various colors and/or color combinations to provide custom made coating) and
“index the secondary database with the primary database such that the user of the computer system” (Peden: fig 1A, 0049-Peden teaches color palate, paint databases in a storage indexing database records of respective databases that including color correction, color measurement applications running on a computer system). It is however, noted that Peden does not teach “simultaneously search both the secondary database and the primary database”, although Peden teaches user interface configured to operate computing system databases (Peden: Abstract, fig 1A). On the other hand, Fujieda disclosed “simultaneously search both the secondary database and the primary database” (Fujieda: Abstract, fig 4, 0029-0030,0041,0092 – Fujieda teaches searching paint colors and paint textures and evaluation values that denotes a degree of attribution to the color category. It is noted that the prior art of Fujed teaches paint colors expressed in color categories associated with sample color values corresponding paint texture fig 4)
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It would have been obvious to a person of ordinary skill in the art at the time of filing the claimed invention searching paint color database having desired texture of Fujieda et al., into paint color matching system particularly first digital color sample with the target color on each of the first samples of Peden et al., because both Peden, Fujieda teaches paint color information stored in a database (Peden: Abstract; Fujieda: Abstract) and both Peden, Fujieda teaches scanning color with spectrophotometer particularly color measurement (Peden: 0037-0039, fig 1, element 30; Fujieda: fig 1, element 2) and they both Peden, Fujieda are from same field of endeavor. Because both Peden, Fujieda teaches paint color databases, it would have been obvious to one skill ed in the art to substitute and/or modify one method for the other particularly searching desired texture or a paint color belongs to a desired color category, further supporting evaluation of sample paint colors into neural network after the training process thereby calculating and storing micro brilliance data thereby color textures accurately quantified (Fujieda: 0031,0033), thus improves overall quality and reliability of the system
As to claim 22,35,40, the combination of Peden, Fujieda disclosed:
“display, to the user of the computer system, one or more coatings from primary database and the secondary database which satisfy at least one of the one or more requirements, wherein displaying the one or more coatings is based at least in part on indexing the secondary database with the primary database” (Peden: 0014-0015, 0043, 0052-0053). On the other hand, Fujieda disclosed “receive, from the user of the computer system a query for a coating which satisfies one or more requirements provided by the user of the computer system” (Fujieda: fig 4, 0033-0034,0037).
As to claim 23,36, the combination of Peden, Fujieda disclosed: “wherein the executable instructions include instructions that are executable to configure the computer system to display, to the user of the computer system, one or more digital images associated with the one or more coatings, the one or more digital images including a face angle, a flop angle, a flash angle, or any combination thereof” (Peden: 0021,0057, 0059-0060).
As to claim 24, the combination of Peden, Fujieda disclosed “wherein the query comprises a color code or spectrophotometric data” (Peden: 0038-0039, fig 1; Fujieda: fig 1, element 2, 0031-0032)
As to claim 25, the combination of Peden, Fujieda disclosed, “wherein the secondary database is separate from the primary database” (Peden: fig 1A, 0047-0048)
As to claim 26, the combination of Peden, Fujieda disclosed,” wherein the executable instructions include instructions that are executable to configure the computer system to determine that the characterization data associated with the custom-made coating is different from the characterization data mapped to each coating of the set of coatings” (Peden: fig 1, 0037-0038, 0050-0051,0055-0056)
As to claim 27, the combination of Peden, Fujieda disclosed, “wherein the characterization data comprises an optical characterization of the custom-made coating” (Fujieda: 0070-0071)
As to claim 28, the combination of Peden, Fujieda disclosed wherein the optical characterization comprises spectrophotometric data” (Fujieda: 0069-0071, 0073-0074)
Conclusion
The prior art made of record
a. US Pub. No. 2020/0074686
b. US Pub. No. 2010/0169255
Examiner's Note: Examiner has cited particular columns and line numbers in the references applied to the claims above for the convenience of the applicant. Although the specified citations are representative of the teachings of the art and are applied to specific limitations within the individual claim, other passages and figures may apply as well. It is respectfully requested from the applicant in preparing responses, to fully consider the references in entirety as potentially teaching all or part of the claimed invention, as well as the context of the passage as taught by the prior art or disclosed by the Examiner.
SEE MPEP 2141.02 [R-5] VI. PRIOR ART MUST BE CONSIDERED IN ITS ENTIRETY, INCLUDING DISCLOSURES THAT TEACH AWAY FROM THE CLAIMS: A prior art reference must be considered in its entirety, i.e., as a whole, including portions that would lead away from the claimed invention. W.L. Gore & Associates, Inc. v. Garlock, Inc., 721 F.2d 1540, 220 USPQ 303 (Fed. Cir. 1983), cert. denied, 469 U.S. 851 (1984) In re Fulton, 391 F.3d 1195, 1201,73 USPQ2d 1141, 1146 (Fed. Cir. 2004). >See also MPEP §2123.
In the case of amending the Claimed invention, Applicant is respectfully requested to indicate the portion(s) of the specification which dictate(s) the structure relied on for proper interpretation and also to verify and ascertain the metes and bounds of the claimed invention.
The prior art made of record, listed on form PTO-892, and not relied upon, if any, is considered pertinent to applicant's disclosure
Authorization for Internet Communications
The examiner encourages Applicant to submit an authorization to communicate with the examiner via the Internet by making the following statement (from MPEP 502.03):
“Recognizing that Internet communications are not secure, I hereby authorize the USPTO to communicate with the undersigned and practitioners in accordance with 37 CFR 1.33 and 37 CFR 1.34 concerning any subject matter of this application by video conferencing, instant messaging, or electronic mail. I understand that a copy of these communications will be made of record in the application file.”
Please note that the above statement can only be submitted via Central Fax (not Examiner's Fax), Regular postal mail, or EFS Web using PTO/SB/439.
Any inquiry concerning this communication or earlier communications from the examiner should be directed to Srirama Channavajjala whose telephone number is 571-272-4108. The examiner can normally be reached on Monday-Friday from 8:00 AM to 5:30 PM Eastern Time.
If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Gorney, Boris, can be reached on (571) 270- 5626. The fax phone numbers for the organization where the application or proceeding is assigned is 571-273-8300 Information regarding the status of an application may be obtained from the Patent Application Information Retrieval (PAIR) system. Status information for published applications may be obtained from either Private PAIR or Public PAIR. Status information for unpublished applications is available through Private PAIR only. For more information about the PAIR system, see http://pair-direct.uspto.gov. Should you have questions on access to the Private PAIR system, contact the Electronic Business Center (EBC) at 866-217-9197 (toll-free)
/Srirama Channavajjala/Primary Examiner, Art Unit 2154