DETAILED ACTION
This Office action is in reply to application no. 19/021,334, filed 15 January 2025 with a preliminary amendment filed 27 February 2025. Claims 1-20 are pending and are considered below.
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 .
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.
Claim 3 is 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.
Claim 3 contains the trademark/trade name “QR”. QR, as applied to two-dimensional bar codes, is a registered trademark of Denso Wave, Inc. of Kariya, Japan. Where a trademark or trade name is used in a claim as a limitation to identify or describe a particular material or product, the claim does not comply with the requirements of 35 U.S.C. 112(b) or 35 U.S.C. 112 (pre-AIA ), second paragraph. See Ex parte Simpson, 218 USPQ 1020 (Bd. App. 1982). The claim scope is uncertain since the trademark or trade name cannot be used properly to identify any particular material or product. A trademark or trade name is used to identify a source of goods, and not the goods themselves. Thus, a trademark or trade name does not identify or describe the goods associated with the trademark or trade name. In the present case, the trademark/trade name is used to identify/describe a machine readable code and, accordingly, the identification/description is indefinite.
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 1-20 are rejected under 35 U.S.C. 101 because the claimed invention is directed to an abstract idea without significantly more. The claims lie within statutory categories of invention, as each is directed to a device (machine) or method (process). The claim(s) recite(s) an enclosure which plays no role at all in the claimed method and might, at most, simply serve as a shelf or enclosure for the computer that performs the claimed steps. The claimed steps are data gathering (to obtain an ID of a device), generate a token in no particular manner, and provide a person with the token.
First, assigning some kind of label or identifier to an object which then passes to a user is a fundamental business practice and a part of routine commercial interactions; just for one example, consumer merchandise of all manner has been routinely identified with various types of barcodes for many decades. These are among the “certain methods of organizing human activity” deemed abstract, so the claims recite an abstract idea.
Second, these are mental steps that can be performed in the human mind or with pen and paper. A good example of this is the recycling facility near the Examiner’s house. The Examiner can take a particular, recyclable object to the facility, and a receiving clerk will either verbally tell the Examiner which location (the various locations are numbered) to take it to or, if there are many different objects, can use a grease pencil to write the location number on each set of objects. None of this presents any practical difficulty, and none requires any technology beyond, at most, some kind of writing implement.
This judicial exception is not integrated into a practical application because aside from the bare inclusion of a generic computer and an enclosure attached or nearby, nothing is done beyond what was set forth above, which does not go beyond generally linking the abstract idea to the technological environment of bin-adjacent, generic computers. See MPEP § 2106.05(h).
As the claims only manipulate information relating to item tags or tokens, they do not improve the “functioning of a computer” or of “any other technology or technical field”. See MPEP § 2106.05(a). They do not apply the abstract idea “with, or by use of a particular machine”, MPEP § 2106.05(b), as the below-cited Guidance is clear that a generic computer is not the particular machine envisioned.
They do not effect a “transformation or reduction of a particular article to a different state or thing”, MPEP § 2106.05(c). First, such information, being intangible, is not a particular article at all. Second, the claimed manipulation is neither transformative nor reductive; as the courts have pointed out, in the end, data are still data.
They do not apply the abstract idea “in some other meaningful way beyond generally linking [it] to a particular technological environment”, MPEP § 2106.05(e), as the lack of technical and algorithmic detail in the claim is so as not to go beyond such a general linkage.
The claim(s) does/do not include additional elements that are sufficient to amount to significantly more than the judicial exception because the additional claim limitations, considered individually and as an ordered combination, are insufficient to elevate an otherwise-ineligible claim.
The claim includes an enclosure, as mentioned above, but this plays no role in the claimed process; at most it serves the purpose of a shelf to which the computer performing the method is adjacent, wtihin or attached. Looking back at Alice, it is inconceivable that the Supreme Court would have decided the case differently if the patentee had added the limitation that the computer at issue was sitting on or within an enclosure.
The computer performing the process includes a processor and memory storing instructions. These elements are recited at a high degree of generality and the specification is clear, ¶ 198, that nothing more than a “general purpose” computer is required, which encompasses a generic computer.
It only performs generic computer functions of nondescriptly manipulating information and sharing information with persons and/or other devices. Generic computers performing generic computer functions, without an inventive concept, do not amount to significantly more than the abstract idea.
The use of NFC was well understood, routine and conventional before the filing of the claimed invention. For example, Scriber et al. (U.S. Publication No. 2019/0096522) disclosed by that time “near field communications” was among then “conventional identification and authentication processes”. [0022]
The type of information being manipulated does not impose meaningful limitations or render the idea less abstract. The claim limitations when considered as an ordered combination – a generic computer, positioned somewhere near a recycling bin, performing a chronological sequence of abstract steps – do nothing more than when they are analyzed individually.
The other independent claim is simply a different embodiment but is likewise directed to a generic computer performing, essentially, the same process. The dependent claims further do not amount to significantly more than the abstract idea: claims 2, 3 and 8 consist entirely of nonfunctional printed matter which bears no functional relation to the claimed substrate. Claims 4, 9 and 17 purport to limit an object outside the scope of the invention. Claims 5, 10 and 19 are simply further descriptive of the type of information being manipulated.
Claims 6 and 7 simply recite further data gathering; claim 20 simply recites further data gathering and additional output. Claims 11-15 purport to further limit the structure of the enclosure, but as the enclosure plays no role in the claimed process, it is unclear how this is supposed to be of any significance; in any case, it does nothing to reduce the level of abstraction.
The claims are not patent eligible. For further guidance please see MPEP § 2106.03 – 2106.07(c) (formerly referred to as the “2019 Revised Patent Subject Matter Eligibility Guidance”, 84 Fed. Reg. 50, 55 (7 January 2019)).
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.
Claim(s) 1-3, 5-7, 9, 11, 13, 15, 16, 18 and 19 are rejected under 35 U.S.C. 103 as being unpatentable over Chen et al. (U.S. Publication No. 2022/0215382) in view of Yamine et al. (U.S. Publication No. 2021/0012605).
In-line citations are to Chen.
With regard to Claim 1:
Chen teaches: A collection device…, wherein the collection device comprises:
a housing having an enclosed volume; [0136; any of the specific types of computers disclosed include a housing having an enclosed volume, as would have been known to those of ordinary skill in the art at the relevant time]
an aperture located on the housing and configured to allow for insertion of the consumer electronic device therethrough and into the enclosed volume; [0140; a “floppy disk” reads on a consumer electronic device, and requires said aperture on the host computer, as would have been known to those of ordinary skill in the art at the relevant time]
an NFC reader configured to receive a unique ID from an NFC-enabled consumer electronic device; [0017; an “NFC reader” may read an “NFC chip” with codes that have been affixed to a product; 0022; a code may be unique to a product]
a processor; [0137; “processor”] and
a memory communicatively connected to the processor, the memory containing instructions configuring the processor [0138; various forms of memory disclosed which contain “sequences of instructions” for the processor to execute] to:
obtain the unique ID corresponding to the NFC-enabled consumer electronic device from the NFC reader; [0017, 0022 as cited above]
generate a token as a function of the unique ID; [0022; “the unique code may be generated based on hashing a token identifier of the token corresponding to the instance of the product”]
distribute the token to a user. [0028; “the product verification system may also transmit the data retrieved from the product blockchain, in association with the token, to the user device”]
Chen does not explicitly teach the purpose of recycling of a consumer electronic device, but in addition to being of no patentable significance as nonlimiting preamble language, it is known in the art. Yamine teaches a recycling method [title] that uses a “bin” to be used by a “recycling participant”. [0014] A recyclable object may include an “NFC” tag to be “scanned” at a “waste collection station”. [0019] Yamine and Chen are analogous art as each is directed to electronic means for using NFC to identify items.
It would have been obvious to one of ordinary skill in the art to combine the teaching of Yamine with that of Chen in order to incentivize desired behaviors, as taught by Yamine; [0001] further, it is simply a substitution of one known part for another with predictable results, simply performing steps for Yamine’s purpose rather than that of Chen; the substitution produces no new and unexpected result.
With regard to Claim 2:
The collection device of claim 1, further comprising a label affixed to an external surface of the collection device, wherein the label comprises at least one of a machine-readable code, an NFC tag, an RFID tag, or a geographic indicator. [Chen, as cited above in regard to claim 1]
With regard to Claim 3:
The collection device of claim 2, wherein the machine-readable code comprises at least one of a QR code, a barcode, a matrix barcode, a PDF417, a Qode, or a MaxiCode. [0068; “bar codes” or “QR codes” may be used]
With regard to Claim 5:
The collection device of claim 1, wherein the token comprises a Non-Fungible Token (NFT). [0039; the token may be a “non-fungible token (NFT)”]
With regard to Claim 6:
The collection device of claim 1, further comprising a sensor configured to detect a datum of the collection device and transmit the datum to the processor. [0017; 0022; the NFC reader coupled with the computer reads on this; a datum scanned by a device is “of” the device]
With regard to Claim 7:
The collection device of claim 6, wherein the sensor comprises at least one of a quantity sensor, a pressure sensor, a weight sensor, an optical sensor, or an environmental sensor. [0068 as coted above in regard to claim 3; a scanner that can read a bar code or QR code reads on an optical sensor]
This claim is not patentably distinct from claim 6. As the sensor only “comprises” one of these, it can include other types of sensors as well, and the sensing can be done entirely with the others. The reference is provided for the purpose of compact prosecution.
With regard to Claim 9:
The collection device of claim 1, wherein the unique ID corresponds to at least one of object manufacture data of the NFC-enabled consumer electronic device, purchase data, or user metadata. [0032; it may relate to an object purchased by a consumer at a retailer]
With regard to Claim 11:
The collection device of claim 1, wherein the housing contains a ventilation. [0140 as cited above in regard to claim 1; any aperture reads on a ventilation]
With regard to Claim 13:
The collection device of claim 1, wherein the aperture comprises at least one of a slit, a mesh, or a grille. [0140 as cited above in claim 1; the aperture of a floppy disk drive reads on a slit]
With regard to Claim 15:
The collection device of claim 1, wherein the housing is foldable, allowing for the collection device to be folded into a more compact shape. [0136; a laptop may be used; laptops include a foldable housing, as would have been known to those of ordinary skill in the art at the relevant time; Yamine, 0062; the container is explicitly foldable]
With regard to Claim 16:
Chen teaches: A method… using the collection device of claim 1, [see a above in regard to the device of claim 1] the method comprising:
obtaining, via the NFC reader, the unique ID corresponding to the NFC-enabled consumer electronic device; [0017, 0022 as cited above in regard to claim 1]
transmitting the unique ID to the processor,
generating the token as a function of the unique ID; [0022; “the unique code may be generated based on hashing a token identifier of the token corresponding to the instance of the product”]
distributing the token to the user. [0028; “the product verification system may also transmit the data retrieved from the product blockchain, in association with the token, to the user device”]
Chen does not explicitly teach the purpose of recycling of a consumer electronic device, but in addition to being of no patentable significance as nonlimiting preamble language, it is known in the art. Yamine teaches a recycling method [title] that uses a “bin” to be used by a “recycling participant”. [0014] A recyclable object may include an “NFC” tag to be “scanned” at a “waste collection station”. [0019] Yamine and Chen are analogous art as each is directed to electronic means for using NFC to identify items.
It would have been obvious to one of ordinary skill in the art to combine the teaching of Yamine with that of Chen in order to incentivize desired behaviors, as taught by Yamine; [0001] further, it is simply a substitution of one known part for another with predictable results, simply performing steps for Yamine’s purpose rather than that of Chen; the substitution produces no new and unexpected result.
With regard to Claim 18:
The method of claim 16, wherein the token is distributed to the user via the NFC reader. [Chen as cited above in regard to claim 16; the computer which includes the NFC reader distributes the token to the user]
With regard to Claim 19:
The method of claim 16, wherein the NFC-enabled consumer electronic device includes an NFC tag comprising: an NFC chip configured to communicate with the NFC reader; and an antenna communicatively connected to the NFC chip. [Chen as cited above; these components are necessary for NFC, as would have been known to those then of ordinary skill in the art]
Claim(s) 4 and 17 are rejected under 35 U.S.C. 103 as being unpatentable over Chen et al. in view of Yamine et al. further in view of Gu (WIPO Publication No. 2021/078053).
These claims are similar so are analyzed together.
With regard to Claim 4:
The collection device of claim 1, wherein the consumer electronic device comprises at least one of a nicotine delivery device or components of a nicotine delivery device.
With regard to Claim 17:
The method of claim 16, wherein the consumer electronic device comprises at least one of a nicotine delivery device or components of a nicotine delivery device.
Chen and Yamine teach the device of claim 1 and method of claim 16, but do not explicitly teach this type of device, but in addition to being of no patentable significance as explained below, it is known in the art. Gu teaches an electronic cigarette recycling system [title] in which a computer can verify an electronic cigarette electronically as part of a recycling process in order to protect the environment. [abstract] Gu and Chen are analogous art as each is directed to electronic means for verifying an object’s identity.
It would have been obvious to one of ordinary skill in the art just prior to the filing of the claimed invention to combine the teaching of Gu with that of Chen and Yamine in order to protect the environment, as taught by Gu; further, it is simply a substitution of known parts with predictable results, simply recycling Gu’s object rather than, or in addition to, that of Yamine; the substitution produces no new and unexpected result.
These claims are not patentably distinct from claims 1 and 16, as the consumer electronic device is not within the scope of the claim; it is simply an object from which identifying information is collected, so its characteristics are considered but given no patentable weight. The reference is provided for the purpose of compact prosecution.
Claim(s) 8 is rejected under 35 U.S.C. 103 as being unpatentable over Chen et al. in view of Yamine et al. further in view of Tanaka et al. (U.S. Publication No. 2003/0001959).
With regard to Claim 8:
The collection device of claim 6, wherein the datum comprises at least one of an amount of the consumer electronic devices present within the housing, a presence or an absence of the consumer electronic devices within the housing, a humidity within the housing, or a temperature within the housing.
Chen and Yamine teach the device of claim 6 but do not explicitly teach these data, but though they are of no patentable significance as explained below, they are known in the art. Tanaka teaches a digital camera and method of recycling the same. [title] Sensors include an “environmental sensor” such as a “thermometer” or “hygrometer”. [0017] A “token” may be provided to a customer, who may provide identifying information. [0066] Tanaka and Chen are analogous art as each is directed to electronic means for managing identity information and using tokens.
It would have been obvious to one of ordinary skill in the art just prior to the filing of the claimed invention to combine the teaching of Tanaka with that of Chen and Yamine in order to prevent illegal disposal, as taught by Tanaka; [abstract] further, it is simply a substitution of one known part for another with predictable results, simply interpreting data in the manner of Tanaka rather than that of Chen; the substitution produces no new and unexpected result.
This claim is not patentably distinct from claim 6. First, it consists entirely of nonfunctional, descriptive language, disclosing at most human interpretation of data which imparts neither structure nor functionality to the claimed device and so is considered but given no patentable weight. Second, as the data only “comprises” one of these, it can include other information, and any further processing can be based entirely on the other information. The reference is provided for the purpose of compact prosecution.
Claim(s) 10 is rejected under 35 U.S.C. 103 as being unpatentable over Chen et al. in view of Yamine et al. further in view of Walker (U.S. Patent No. 10,530,580).
With regard to Claim 10:
The collection device of claim 1, wherein the NFC reader is configured to read at least one NFC tag type including at least one of an NFC Forum Type 1 tag, an NFC Forum Type 2 tag, an NFC Forum Type 3 tag, an NFC Forum Type 4 tag, or a passive high frequency HF RFID tag.
Chen and Yamine teach the device of claim 1 but do not explicitly teach these types of tags, but they are known in the art. Walker teaches an electronic vault [title] in which tokens are used as part of an authentication/identity verification process, [Col. 7, lines 51 52] and use an NFC type 4 tag. [Col. 37, lines 9-10] Walker and Chen are analogous art as each is directed to electronic means for using tokens and verifying identities.
It would have been obvious to one of ordinary skill in the art just prior to the filing of the claimed invention to combine the teaching of Walker with that of Chen and Yamine in order to balance security with ease of access, as taught by Walker; [Col. 2, lines 20-21] further, it is simply a substitution of one known part with predictable results, simply using the NFC tag of Walker in place of that of Chen; the substitution produces no new and unexpected result.
Claim(s) 12 is rejected under 35 U.S.C. 103 as being unpatentable over Chen et al. in view of Yamine et al. further in view of Kinder et al. (U.S. Publication No. 2020/0231380).
With regard to Claim 12:
The collection device of claim 1, wherein the aperture is a one-way aperture comprising a closure mechanism configured to only allow for deposition of the consumer electronic device and to prevent retrieval of the consumer electronic device.
Chen and Yamine teach the device of claim 1 but do not explicitly teach such a one-way aperture, but it is known in the art. Kinder teaches a refuse container [title] that performs identification of objects [0006] using “computer program interactions”. [0044] It may be used to collect recyclable materials. [0002] A slot into which objects may be inserted “is dimensioned to prevent removal” of an object. [0031] Kinder and Chen are analogous art as each is directed to electronic means for performing identification.
It would have been obvious to one of ordinary skill in the art just prior to the filing of the claimed invention to combine the teaching of Kinder with that of Chen and Yamine in order to ensure regulatory compliance, as taught by Kinder; [0002] further, it is simply a substitution of one known part for another with predictable results, simply using the aperture of Kinder in place of that of Chen or Yamine; the substitution produces no new and unexpected result.
Claim(s) 14 is rejected under 35 U.S.C. 103 as being unpatentable over Chen et al. in view of Yamine et al. further in view of Sawafta et al. (U.S. Publication No. 2022/0136782).
With regard to Claim 14:
The collection device of claim 1, wherein the housing is formed of a non- flammable material.
Chen and Yamine teach the device of claim 1 but do not explicitly teach a non-flammable housing, but it is known in the art. Sawafta teaches an energy-management system [title] which includes that a computer is contained within a housing [0040; 0059; Fig. 2B] and that the housing may be made of a nonflammable material. [0059] A part of the system may include an opening. [0064] Sawafta and Chen are analogous art as each includes a description of computer components and an opening or aperture into which objects or material may be placed.
It would have been obvious to one of ordinary skill in the art just prior to the filing of the claimed invention to combine the teaching of Sawafta with that of Chen and Yamine, as market forces (and regulations) for many years have driven manufacturers to enclose all manner of objects within nonflammable enclosures; further, it is simply a substitution of one known part for another with predictable results, simply using Sawafta’s material for the exterior of a device in place of that of Chen; the substitution produces no new and unexpected result.
Claim(s) 20 is rejected under 35 U.S.C. 103 as being unpatentable over Chen et al. in view of Yamine et al. further in view of Quigley et al. (U.S. Publication No. 2022/0008970).
With regard to Claim 20:
The method of claim 16, further comprising:
using a sensor to detect a datum of the collection device;
transmitting the datum to the processor; and
transmitting an alert from the processor to a permitted facility, based on the datum.
Chen and Yamine teach the method of claim 16 including using a sensor to detect data and the processor then making use of that data as cited above, but do not explicitly teach transmitting an alert, but it is known in the art. Quigley teaches a computer system [0005] that performs an authentication process. [0080] It makes use of sensors, [0087] and may send an alert to an operator of a landfill, [0168] which reads on a permitted facility. Quigley and Chen are analogous art as each is directed to electronic means for using sensors and performing authentication.
It would have been obvious to one of ordinary skill in the art just prior to the filing of the claimed invention to combine the teaching of Quigley with that of Chen and Yamine in order to make process adjustments when needed, as taught by Quigley; [0005] further, it is simply a substitution of one known part for another with predictable results, simply providing the output of Quigley in place of, or in addition to, that of Chen; the substitution produces no new and unexpected result.
Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to SCOTT C ANDERSON whose telephone number is (571)270-7442. The examiner can normally be reached M-F 9:00 to 5:30.
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/SCOTT C ANDERSON/Primary Examiner, Art Unit 3694