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 .
Applicant’s response dated 1/20/26 is acknowledged and entered. Claims 1-7 are pending.
Claim Rejections - 35 USC § 102
The following is a quotation of the appropriate paragraphs of 35 U.S.C. 102 that form the basis for the rejections under this section made in this Office action:
A person shall be entitled to a patent unless –
(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.
Claims 1-7 are rejected under 35 U.S.C. 102(a)(1) as being anticipated by Cheong (US 2008/0298688, previously cited).1 Regarding claim 1, Cheong teaches a consumer product comprising an outer packaging (paragraph 0006: media on a physical object),2 the outer packaging having a visible code and having a first colour, a second colour and a third colour (paragraph 0079: CMYK includes 4 colors: cyan, magenta, yellow, black), wherein each colour occupies a surface of the outer packaging and wherein the surface occupied by the first colour, the second colour and the third colour is larger than the surface occupied by other colours (see Fig. 2A), characterised in that wherein the visible code includes a matrix of square cells (Fig. 2A): with a first group of cells being of the first colour (paragraph 0036); a second group of cells being of the second colour (paragraph 0036); a third group of cells (paragraph 0036) or3 a frame surrounding the first group and the second group of cells being of the third colour, wherein: the first colour has a brightness that is in a first range of brightness; the second colour has a brightness that is in a second range of brightness, with the second range of brightness being brighter than the first range of brightness (paragraph 0090); and wherein the third colour is in the first range of brightness or in the second range of brightness (paragraph 0090). Regarding claim 2, Cheong teaches the code has a first outer frame and a second frame consecutive to the first outer frame, with the first outer frame being of the first colour and the second frame being of the second colour (Fig. 1: color code & paragraph 0038).4 Regarding claim 3, Cheong teaches the code has a first outer frame and a second frame consecutive to the first outer frame, with the first outer frame being of the third colour and the second frame being of the second colour Fig. 1: color code & paragraph 0038), with the third colour being in the first range of brightness (paragraph 0090). Regarding claim 4, Cheong teaches the code has a first outer frame and a second frame consecutive to the first outer frame, with the first outer frame being of the second colour and the second frame being of the first colour (paragraphs 0038 & 0079). Regarding claim 5, Cheong teaches the code has a first outer frame and a second frame consecutive to the first outer frame, with the first outer frame being of the second colour and the second frame being of the third colour, with the third colour being in the first range of brightness (paragraph 0079). Regarding claim 6, Cheong teaches the packaging also has a fourth colour (C4) which is in the first range of brightness or in the second range of brightness, with a fourth group of cells being of the fourth colour (paragraph 0079). Regarding claim 7, Cheong teaches a device having a camera and a processor, the processor being configured to assign a first value to the colours corresponding to the first range of brightness and to assign a second different value to the colours corresponding to the second range of brightness, such that a binary code can be obtained from a code comprising three or more colours (paragraph 0079).
Response to Arguments
Applicant's arguments filed 1/20/26 have been fully considered, but they are not persuasive. Applicant argues that the cited art fails to teach all limitations of the claims. Applicant’s Remarks, pages 2-4. However, the cited art teaches all limitations of the claims. In particular, Applicant first argues that Cheong fails to disclose any packaging. Id. at 2. However, paragraph 0006 of Cheong discusses a physical object with tag media attached, and the tag media may be a barcode. This physical object serves as the packaging as claimed. Next, Applicant argues the CMYK mathematical color model of Cheong “has nothing to do with Applicant’s use of cyan, magenta, yellow, and black.” Applicant’s Remarks, page 2. However, it is well known in the art that CMYK is a color model that uses cyan, magenta, yellow, and black. In fact, Cheong states as much in paragraph 0079. As a result, the CMYK model of Cheong is related to the instant application. Applicant next argues that paragraph 0036 of Cheong is dependent on four colors, while the instant claims depend on three. Applicant’s Remarks, pages 2-4. This is an improper narrowing of the claims. Applicant’s claims use the word “comprising”, which is inclusive and open-ended. MPEP § 2111.03. In Gillette Co. v. Energizer Holdings Inc., the Federal Circuit found that a claim to a razor blade with a group of first, second, and third razor blades encompasses razors with more than three blades because of the use of the word “comprising” in the claim. Gillette Co. v. Energizer Holdings Inc., 405 F.3d 1367, 1371-73, 74 USPQ2d 1586, 1589-91 (Fed. Cir. 2005). Here, claim 1 uses “comprising”, which does not preclude additional colors. Thus, even if Applicant is correct, and the system of Cheong cannot achieve the results of the instant application,5 claim 1’s language necessarily allows the use of four colors. Applicant next argues that the SLACC algorithm of Cheong distinguishes between chromatic and achromatic cells based on their lightness, while the instant application allegedly imposes lightness rules on the cells. The alignment according to brightness of paragraph 0090 of Cheong serves as the imposed lightness rules of the claim because the alignment serves as the rule, and the alignment is based on the lightness (or brightness as termed in Cheong). Next, Applicant argues with regard to claims 2-4 that there is no frame disclosed in Cheong. Applicant’s Remarks, pages 3-4. As seen in Fig. 1, the prior art codes all have a frame surrounding the perimeter of each code. Moreover, paragraph 0038 discusses a “white quiet zone”, which is a different color and serves as the frame as discussed in the claim. Last, Applicant argues with regard to claim 7 that no device is mentioned in Cheong. Applicant’s Remarks, pages 3-4. Paragraph 0036 discusses a mobile phone or PDA, either of which serves as the claimed device. Because the cited art teaches all limitations of the claims, the cited art anticipates the claims.
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 MATTHEW MIKELS whose telephone number is (571)270-5470. The examiner can normally be reached Monday to Thursday 7:00 AM ET - 4:30 PM ET, Friday 7:00 AM ET - 11:00 AM ET, the Examiner is on central time.6
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.
Information regarding the status of published or unpublished applications may be obtained from Patent Center. Unpublished application information in Patent Center is available to registered users. To file and manage patent submissions in Patent Center, visit: https://patentcenter.uspto.gov. Visit https://www.uspto.gov/patents/apply/patent-center for more information about Patent Center and https://www.uspto.gov/patents/docx for information about filing in DOCX format. For additional questions, contact the Electronic Business Center (EBC) at 866-217-9197 (toll-free). If you would like assistance from a USPTO Customer Service Representative, call 800-786-9199 (IN USA OR CANADA) or 571-272-1000.
/MATTHEW MIKELS/Primary Examiner, Art Unit 2876
1 In addition to the cited paragraphs, please see also the associated figures.
2 See also additional discussion below.
3 Note that this limitation lists the third group of cells and the frame in the alternative using “or”, so only one of the two is required to anticipate the claim.
4 See also discussion below.
5 The Examiner does not admit this.
6 The Examiner can also be reached at matthew.mikels@uspto.gov.