DETAILED ACTION
The present application, filed on or after March 16, 2013, is being examined under the first inventor to file provisions of the AIA .
This Action is non-final and is in response to the claims filed January 15, 2025. Claims 1-20 are currently pending, of which claims 1-20 are currently rejected.
Priority
Examiner notes that the family of applications has a chain of priority going back to November 7, 2013. The entirety of the present application is directed to concepts regarding permission-based structure and authorization for a first user to use another user’s proprietary image. The extensive rights-based settings for the selected images are not disclosed in the provisional application (61/901,042) filed November 7, 2013. The permission structure does not have priority until the divisional application (16/724,615) was filed on December 23, 2019. Therefore, that date is the date that the prior art must be filed before when it relates to the permissions claimed in the present application.
Examiner further notes that other priority issues will be treated on a case-by-case basis, such as the simultaneous requests of claim 13, which have no previous support and are thus subjected to the filing date of the present application.
Claim Interpretation
The following is a quotation of 35 U.S.C. 112(f):
(f) Element in Claim for a Combination. – An element in a claim for a combination may be expressed as a means or step for performing a specified function without the recital of structure, material, or acts in support thereof, and such claim shall be construed to cover the corresponding structure, material, or acts described in the specification and equivalents thereof.
The following is a quotation of pre-AIA 35 U.S.C. 112, sixth paragraph:
An element in a claim for a combination may be expressed as a means or step for performing a specified function without the recital of structure, material, or acts in support thereof, and such claim shall be construed to cover the corresponding structure, material, or acts described in the specification and equivalents thereof.
The claims in this application are given their broadest reasonable interpretation using the plain meaning of the claim language in light of the specification as it would be understood by one of ordinary skill in the art. The broadest reasonable interpretation of a claim element (also commonly referred to as a claim limitation) is limited by the description in the specification when 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph, is invoked.
As explained in MPEP § 2181, subsection I, claim limitations that meet the following three-prong test will be interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph:
(A) the claim limitation uses the term “means” or “step” or a term used as a substitute for “means” that is a generic placeholder (also called a nonce term or a non-structural term having no specific structural meaning) for performing the claimed function;
(B) the term “means” or “step” or the generic placeholder is modified by functional language, typically, but not always linked by the transition word “for” (e.g., “means for”) or another linking word or phrase, such as “configured to” or “so that”; and
(C) the term “means” or “step” or the generic placeholder is not modified by sufficient structure, material, or acts for performing the claimed function.
Use of the word “means” (or “step”) in a claim with functional language creates a rebuttable presumption that the claim limitation is to be treated in accordance with 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph. The presumption that the claim limitation is interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph, is rebutted when the claim limitation recites sufficient structure, material, or acts to entirely perform the recited function.
Absence of the word “means” (or “step”) in a claim creates a rebuttable presumption that the claim limitation is not to be treated in accordance with 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph. The presumption that the claim limitation is not interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph, is rebutted when the claim limitation recites function without reciting sufficient structure, material or acts to entirely perform the recited function.
Claim limitations in this application that use the word “means” (or “step”) are being interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph, except as otherwise indicated in an Office action. Conversely, claim limitations in this application that do not use the word “means” (or “step”) are not being interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph, except as otherwise indicated in an Office action.
This application includes one or more claim limitations that do not use the word “means,” but are nonetheless being interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph, because the claim limitation(s) uses a generic placeholder that is coupled with functional language without reciting sufficient structure to perform the recited function and the generic placeholder is not preceded by a structural modifier. Such claim limitation(s) is/are: “communication interface”, “authorization system”, “merchandise creation system”, “notification system”, and “security system” in claims 1, 2, 4, 5, 7, 10-12, 14-17, 19, and 20.
Because this/these claim limitation(s) is/are being interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph, it/they is/are being interpreted to cover the corresponding structure described in the specification as performing the claimed function, and equivalents thereof.
If applicant does not intend to have this/these limitation(s) interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph, applicant may: (1) amend the claim limitation(s) to avoid it/them being interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph (e.g., by reciting sufficient structure to perform the claimed function); or (2) present a sufficient showing that the claim limitation(s) recite(s) sufficient structure to perform the claimed function so as to avoid it/them being interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph.
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 1-20 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 applications subject to pre-AIA 35 U.S.C. 112, the applicant), regards as the invention.
Claims 1, 2, 4, 5, 7, 10-12, 14-17, 19, and 20 are rejected because claim limitations “communication interface”, “authorization system”, “merchandise creation system”, “notification system”, and “security system” invoke 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph. However, the written description fails to disclose the corresponding structure, material, or acts for performing the entire claimed function and to clearly link the structure, material, or acts to the function. The “communication interface” is never defined and it is unclear if this is a piece of hardware/physical network equipment, or a software module, or a combination of both. See Specification paras. [0006] and [0043]. Additionally, the “authorization system” also is never defined and it is unclear if this is a piece of physical hardware, a software module, or a combination of both. See Id. at paras. [0036] and [0042]. Furthermore, the “merchandise creation system” lacks any specific structure and it is unclear if this is meant to be an actual manufacturing device, or some software element that is used to create an image of the final product, or a combination of both. Applicant’s disclosure is directed to both physical and virtual merchandise. See Id. at paras. [0035] and [0047]. Moreover, the “notification system” has no support in Applicant’s disclosure outside of its introduction in claim 12. Therefore, it is unclear if the claims are directed to hardware, software, and/or a combination of both. Finally, the “security system” lacks any support or disclosure outside of its introduction in claim 17. At best, this could be part of the ledgers that can store transaction information, even though this language appears directed more towards NFTs. See Id. at paras. [0027] and [0037]. Therefore, it is unclear if this is directed to some type of hardware element, a purely software element, or a combination of both. It is for at least these reasons that the claims are indefinite and are rejected under 35 U.S.C. 112(b) or pre-AIA 35 U.S.C. 112, second paragraph.
Claims 3, 6, 8, 9, 13, and 18 are rejected based on their dependency from an above-rejected claim
Applicant may:
(a) Amend the claim so that the claim limitation will no longer be interpreted as a limitation under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph;
(b) Amend the written description of the specification such that it expressly recites what structure, material, or acts perform the entire claimed function, without introducing any new matter (35 U.S.C. 132(a)); or
(c) Amend the written description of the specification such that it clearly links the structure, material, or acts disclosed therein to the function recited in the claim, without introducing any new matter (35 U.S.C. 132(a)).
If applicant is of the opinion that the written description of the specification already implicitly or inherently discloses the corresponding structure, material, or acts and clearly links them to the function so that one of ordinary skill in the art would recognize what structure, material, or acts perform the claimed function, applicant should clarify the record by either:
(a) Amending the written description of the specification such that it expressly recites the corresponding structure, material, or acts for performing the claimed function and clearly links or associates the structure, material, or acts to the claimed function, without introducing any new matter (35 U.S.C. 132(a)); or
(b) Stating on the record what the corresponding structure, material, or acts, which are implicitly or inherently set forth in the written description of the specification, perform the claimed function. For more information, see 37 CFR 1.75(d) and MPEP §§ 608.01(o) and 2181.
Examiner’s Note
The prior art rejections below cite particular paragraphs, columns, and/or line numbers in the references for the convenience of the applicant. Although the specified citations are representative of the teachings in the art and are applied to the specific limitations within the individual claim, other passages and figures may apply as well. It is respectfully requested that, in preparing responses, the applicant fully consider the references in their 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.
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 (i.e., changing from AIA to pre-AIA ) 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.
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) 1-20 is/are rejected under 35 U.S.C. 103 as being unpatentable over Moseley et al. (U.S. Publication No. 2013/0246277; hereinafter, “Moseley”) and further in view of Harrison (U.S. Publication No. 2008/0222560; retrieved from IDS filed January 15, 2025).
As per claim 1, Moseley teaches an apparatus for generating articles of merchandise with selected images, comprising:
a processor configured to determine whether the user has permission to create the article of merchandise with the selected image (See Moseley para. [0026]: “decides whether the customer have a valid licensing agreement with the image provider of the selected file”);
an authorization system configured to verify permissions from necessary parties if the user does not have direct permission (See Moseley para. [0026]: “If the [valid licensing] agreement does not exist, web server will process agreement request on behalf of the customer to the image provider. An email is sent to the selected file's provider containing pertinent information about the requesting customer at block 210. The image provider receives email from the web server with a link to the agreement request”); and
However, while Moseley teaches a communication interface configured to receive a request from a user (See Moseley paras. [0023] and [0026]), Moseley does not explicitly teach creation of an article of merchandise. Moreover, while Moseley teaches the permission system where an approved image can be printed by a user, such as a manufacturer of a framed image, and thus if all permissions are obtained (See Moseley paras. [0023] and [0029-30]), Moseley does not explicitly teach a merchandise creation system configured to create the article of merchandise with the selected image, if all necessary permissions are obtained (See Moseley paras. [0023] and [0029-30]: approved image can be printed by a user, such as a manufacturer of a framed image).
Harrison teaches that the request from a user of Moseley can create an article of merchandise with a selected image, as well as a merchandise creation system configured to create the article of merchandise with the selected image, if all necessary permissions are obtained in Moseley (See Harrison para. [0038]: printing and finishing facility to create different graphical merchandise).
It would have been obvious before the effective filing date of the claimed invention to a person having ordinary skill in the art to combine, with a reasonable expectation of success, the permissions-based image browsing of Moseley with the user selections and creation of Harrison. One would have been motivated to combine these references because both references disclose image navigation and selection for third party printing, and Harrison further enhances the user experience by expanding upon the customization options available, as “[a] high degree of personalization is desirable in the image-based products to make them memorable to the users or to the photo gift recipients” (See Harrison para. [0001]).
As per claim 2, Moseley/Harrison teaches the apparatus of claim 1. Moseley further teaches wherein the communication interface is further configured to send authorization requests to parties with permission to [create the article of merchandise] with the selected image (See Moseley para. [0026]: image provider can approve the use of the image).
However, while Moseley teaches image approval that can be used by a manufacturer (See Moseley para. [0023]), Moseley does not explicitly teach the merchandise creation itself.
Harrison teaches create the article of merchandise (See Harrison para. [0038]: printing and finishing facility to create different graphical merchandise).
It would have been obvious before the effective filing date of the claimed invention to a person having ordinary skill in the art to combine Moseley with the teachings of Harrison for at least the same reasons as discussed above in claim 1.
As per claim 3, Moseley/Harrison teaches the apparatus of claim 1. Moseley further teaches wherein the processor is further configured to identify parties with permission to [create the article of merchandise] with the selected image (See Moseley para. [0026]: customer can browse gallery and select an image and a check is made whether or not an image provider-customer agreement exists).
However, while Moseley teaches image approval that can be used by a manufacturer (See Moseley para. [0023]), Moseley does not explicitly teach the merchandise creation itself.
Harrison teaches create the article of merchandise (See Harrison para. [0038]: printing and finishing facility to create different graphical merchandise).
It would have been obvious before the effective filing date of the claimed invention to a person having ordinary skill in the art to combine Moseley with the teachings of Harrison for at least the same reasons as discussed above in claim 1.
As per claim 4, Moseley/Harrison teaches the apparatus of claim 1. Moseley further teaches wherein the authorization system is further configured to determine whether all necessary parties have authorized the user to [create the article of merchandise] with the selected image (See Moseley paras. [0026-28]: customers can license images and all parties involved for the licensing and purchase transaction decisions can be tracked).
However, while Moseley teaches image approval that can be used by a manufacturer (See Moseley para. [0023]), Moseley does not explicitly teach the merchandise creation itself.
Harrison teaches create the article of merchandise (See Harrison para. [0038]: printing and finishing facility to create different graphical merchandise).
It would have been obvious before the effective filing date of the claimed invention to a person having ordinary skill in the art to combine Moseley with the teachings of Harrison for at least the same reasons as discussed above in claim 1.
As per claim 5, Moseley/Harrison teaches the apparatus of claim 1. Moseley further teaches wherein the merchandise creation system is further configured to not [create the article of merchandise] if all necessary parties have not authorized the user (See Moseley Fig. 2 and paras. [0026-28]: licensing images and if license is declined then the image cannot be used).
However, while Moseley teaches image approval that can be used by a manufacturer (See Moseley para. [0023]), Moseley does not explicitly teach the merchandise creation itself.
Harrison teaches create the article of merchandise (See Harrison para. [0038]: printing and finishing facility to create different graphical merchandise).
It would have been obvious before the effective filing date of the claimed invention to a person having ordinary skill in the art to combine Moseley with the teachings of Harrison for at least the same reasons as discussed above in claim 1.
As per claim 6, Moseley/Harrison teaches the apparatus of claim 1, further comprising a user interface configured to display a status of permission requests to the user (See Moseley Fig. 2 and paras. [0026-28]: licensing images and displaying icons to click to license and indicate approval of the requested image).
As per claim 7, Moseley/Harrison teaches the apparatus of claim 1. However, while Moseley teaches retrieving images from other users, Moseley does not explicitly teach the users uploading their own images.
Harrison teaches wherein the communication interface is configured to receive image data from the user (See Harrison para. [0027]: “The user 70 can upload digital images to the online-photo website. The user can store the images in an online photo album, create personalized image-based product at the web user interface, and order a personal image-based product”).
It would have been obvious before the effective filing date of the claimed invention to a person having ordinary skill in the art to combine Moseley with the teachings of Harrison for at least the same reasons as discussed above in claim 1.
As per claim 8, Moseley/Harrison further teaches the apparatus of claim 1, wherein the processor is configured to store user permission data in a database (See Moseley paras. [0012] and [0027-28]: database can store license records).
As per claim 9, Moseley/Harrison teaches the apparatus of claim 1. Moseley further teaches a database configured to store information about parties with permission to [create the article of merchandise] with specific images (See Moseley paras. [0026-28]: database can store license records, including a global license as well as additional requests for licensing that can be approved or denied).
However, while Moseley teaches image approval that can be used by a manufacturer (See Moseley para. [0023]), Moseley does not explicitly teach the merchandise creation itself.
Harrison teaches create the article of merchandise (See Harrison para. [0038]: printing and finishing facility to create different graphical merchandise).
It would have been obvious before the effective filing date of the claimed invention to a person having ordinary skill in the art to combine Moseley with the teachings of Harrison for at least the same reasons as discussed above in claim 1.
As per claim 10, Moseley/Harrison further teaches the apparatus of claim 1, wherein the authorization system is configured to log all authorization requests and responses (See Moseley paras. [0027-28] and [0033]: transaction database and web server can “store the customer, image provider, and file data and make decisions on licensing based on the values of those records. Another primary function of the web server is to host all of the various transactions that occur between the customers”).
As per claim 11, Moseley/Harrison teaches the apparatus of claim 1. However, while Moseley lets a user browse a gallery of images, Moseley does not explicitly teach previewing merchandise.
Harrison teaches wherein the merchandise creation system is configured to generate a preview of the article of merchandise with the selected image (See Harrison Figs. 3-8 and paras. [0040-43]: user interface with multiple controls to manipulate the various images and their layouts and other features. As the user manipulates the controls, the images are updated accordingly).
It would have been obvious before the effective filing date of the claimed invention to a person having ordinary skill in the art to combine Moseley with the teachings of Harrison for at least the same reasons as discussed above in claim 1.
As per claim 12, Moseley/Harrison further teaches the apparatus of claim 1, further comprising a notification system configured to inform the user of a completion of a merchandise creation process (See Moseley para. [0026]: once approval status is decided, a decision email is sent to the customer; see also Harrison para. [0023]: confirming completion of orders and shipping of said orders)
As per claim 13, Moseley/Harrison teaches the apparatus of claim 1. Moseley , wherein the processor is configured to handle multiple [merchandise creation] requests simultaneously (See Moseley paras. [0027-28] and [0033]: tracking transactions and requests for all customers and users)
However, while Moseley teaches the multiple request tracking, as well as image approval that can be used by a manufacturer (See Moseley para. [0023]), Moseley does not explicitly teach the merchandise creation itself.
Harrison teaches merchandise creation (See Harrison para. [0038]: printing and finishing facility to create different graphical merchandise, which would apply to the transaction tracking of Moseley).
It would have been obvious before the effective filing date of the claimed invention to a person having ordinary skill in the art to combine Moseley with the teachings of Harrison for at least the same reasons as discussed above in claim 1.
As per claim 14, Moseley/Harrison further teaches the apparatus of claim 1, wherein the communication interface is configured to operate over a network to facilitate remote user requests (See Moseley paras. [0008] and [0023-24]: protecting and transmitting image data over a network, including using a website and web server to for image purchasing and retrieval).
As per claim 15, Moseley/Harrison teaches the apparatus of claim 1. However, while Moseley teaches all transactions and licensing duties can be handled by the system, as well as item information (See Moseley paras. [0012] and [0024]), Moseley does not explicitly teach multiple types of merchandise items.
Harrison teaches multiple types of merchandise items (See Harrrison para. [0038]: variety of merchandise types). Therefore, together, Moseley/Harrison teaches wherein the authorization system is configured to handle permissions for multiple types of merchandise items.
It would have been obvious before the effective filing date of the claimed invention to a person having ordinary skill in the art to combine Moseley with the teachings of Harrison for at least the same reasons as discussed above in claim 1.
As per claim 16, Moseley/Harrison teaches the apparatus of claim 1. However, while Moseley teaches higher resolution images (See Moseley paras. [0024-25]), Moseley does not explicitly teach other enhancements to the selected images.
Harrison teaches wherein the merchandise creation system is configured to apply image processing techniques to enhance the selected image before creating the article of merchandise (See Harrison para. [0001], [0026], and [0030]: “user can store, organize, manage, edit, enhance, and share digital images at the central network location using a web browser or software tools provided by the service provider”).
It would have been obvious before the effective filing date of the claimed invention to a person having ordinary skill in the art to combine Moseley with the teachings of Harrison for at least the same reasons as discussed above in claim 1.
As per claim 17, Moseley/Harrison further teaches the apparatus of claim 1, further comprising a security system configured to ensure that all communications and data storage are secure (See Moseley paras. [0012] and [0025]: transactions hosted on a secure server with encryption software to encrypt the image files).
As per claim 18, Moseley/Harrison teaches the apparatus of claim 1. Moseley further teaches wherein the processor is configured to generate reports on [merchandise creation] activities (See Moseley para. [0023]: transaction reports).
However, while Moseley teaches image approval that can be used by a manufacturer (See Moseley para. [0023]), Moseley does not explicitly teach the merchandise creation itself.
Harrison teaches merchandise creation activities (See Harrison para. [0038]: printing and finishing facility to create different graphical merchandise).
It would have been obvious before the effective filing date of the claimed invention to a person having ordinary skill in the art to combine Moseley with the teachings of Harrison for at least the same reasons as discussed above in claim 1.
As per claim 19, Moseley/Harrison teaches the apparatus of claim 1. However, while Moseley teaches web server communications, Moseley does not explicitly teach multiple communication protocols.
Harrison teaches wherein the communication interface is configured to support multiple communication protocols (See Harrison paras. [0024] and [0034]: multiple types of standard or proprietary protocols can be used for the electronic communication).
It would have been obvious before the effective filing date of the claimed invention to a person having ordinary skill in the art to combine Moseley with the teachings of Harrison for at least the same reasons as discussed above in claim 1.
As per claim 20, Moseley/Harrison teaches the apparatus of claim 1.
However, while Moseley teaches image approval that can be used by a manufacturer (See Moseley para. [0023]), Moseley does not explicitly teach the merchandise creation itself.
Harrison teaches wherein the merchandise creation system is configured to support various merchandise formats, including clothing, accessories, and home decor items (See Harrrison para. [0038]: variety of merchandise types, including “greeting or holiday cards, books, greeting cards, playing cards, T-shirts, coffee mugs, mouse pads, key-chains, photo collectors, photo coasters, or other types of photo gift or novelty item”).
It would have been obvious before the effective filing date of the claimed invention to a person having ordinary skill in the art to combine Moseley with the teachings of Harrison for at least the same reasons as discussed above in claim 1.
Conclusion
The prior art made of record and not relied upon is considered pertinent to applicant's disclosure.
Van Osdol et al. (U.S. 2013/0003126) discloses copyright holder distribution authorization for printing images (See Van Osdol Fig. 3 and paras. [0020-22]); and
Glimcher et al. (U.S. 2012/0317657) discloses an image rights transacation and licensing system with various images and artists to browse. This includes an image viewer and collector UI that can track ownership (See Glimcher Figs. 6 and 7 and paras. [0101-106] and [0150-162]).
Any inquiry concerning this communication or earlier communications from the examiner should be directed to Nicholas Klicos whose telephone number is (571)270-5889. The examiner can normally be reached Mon-Fri 9:00 AM-5:00 PM.
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If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Scott Baderman can be reached at (571) 272-3644. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/NICHOLAS KLICOS/Primary Examiner, Art Unit 2118
