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 .
Claim Objections
Claim 7-9 & 12 are objected to because of the following informalities: claim formatting and typographical error.
For claims 7-9, a comma should be placed after the preamble and before ‘wherein’ to indicate the transition from the preamble.
For claim 12, the claim number upon which it depends is missing from the preamble.
For the sake of compact prosecution, claim 12 will be examined as being dependent to claim 1.
Appropriate correction is required.
Claim Rejections - 35 USC § 103
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.
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 set forth in Graham v. John Deere Co., 383 U.S. 1, 148 USPQ 459 (1966), that are applied 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 non-obviousness.
This application currently names joint inventors. In considering patentability of the claims the examiner presumes that the subject matter of the various claims was commonly owned as of the effective filing date of the claimed invention(s) absent any evidence to the contrary. Applicant is advised of the obligation under 37 CFR 1.56 to point out the inventor and effective filing dates of each claim that was not commonly owned as of the effective filing date of the later invention in order for the examiner to consider the applicability of 35 U.S.C. 102(b)(2)(C) for any potential 35 U.S.C. 102(a)(2) prior art against the later invention.
Claims 1, 3 & 4 are rejected under 35 U.S.C. 103 as being unpatentable over Ranc (WO2019012207A1). Claim elements are presented in italics.
1. A record, comprising: a disk having information tracks, a first centerline, and a first hole on the centerline; and an electronic authentication tag embedded within the disk, the electronic authentication tag having stored therein certain information related to the record, a second centerline aligned with the first centerline, and a second hole aligned on the second centerline.
With respect to claim 1, the prior art of Ranc teaches a record, comprising: a disk having information tracks (P. 2, ¶ 3), a first centerline (Fig. 1, item 6), and a first hole (Fig. 1, area of item 9 with diameter item D) on the centerline; and an electronic authentication tag (Fig. 1, electronic chip item 2, connected to antenna items 3, 4, 5) embedded within the disk [P. 2, ¶ 3-6], the electronic authentication tag having stored therein certain information [P. 1, last ¶ - P. 2, ¶ 1; P. 3, ¶ 4], a second centerline aligned with the first centerline, and a second hole aligned on the second centerline (See RFID-type radio-label of Fig. 1, items 2, 3, 4, 5; [P. 2, ¶ 6-7]).
Ranc is silent on the specific information that is stored on the NFC, and does not explicitly teach that the information is related to the record.
However, it would have been prima facie obvious to a person of ordinary skill in the art prior to the time of filing that the information stored on the electronic chip could include authentication information related to the vinyl record within which it was embedded.
3. The record of claim 1, wherein the disk is a vinyl disk.
With respect to claim 3, Ranc teaches the disk is a vinyl disk [P. 2, ¶ 3].
4. The record of claim 1 and further comprising at least one label, wherein the electronic authentication tag is between the label and the disk.
With respect to claim 4, Ranc teaches at least one label, wherein the electronic authentication tag is between the label and the disk. Ranc teaches the RFID device is bonded to the paper label with glue [P. 4, ¶ 3-4], then pressed to form a vinyl record with the RFID device in contact with the vinyl [P. 2, ¶ 5; P. 4, ¶ 2, 5].
Claims 2, 10 & 11 are rejected under 35 U.S.C. 103 as being unpatentable over Ranc (WO2019012207A1), as set forth above in the rejection of claim 1, and further in view of Asp (US20040238623A1).
2. The record of claim 1, and further comprising a cover between the disk and the electronic authentication tag, wherein the cover includes an adhesive contacting the electronic authentication tag.
With respect to claim 2, Ranc teaches at least one label, wherein the electronic authentication tag is between the label and the disk. Ranc teaches the RFID device is bonded to the paper label with glue [P. 4, ¶ 3-4], then pressed to form a vinyl record with the RFID device in contact with the vinyl [P. 2, ¶ 5; P. 4, ¶ 2, 5].
Ranc is silent on a cover separating the embedded RFID tag and the elastic material.
However, the prior art of Asp teaches using membrane layers (Fig. 2, items 10a-10b) for encasing or encapsulating an RFID tag (Fig. 2, item 11) to separate in from the main product material [0033-0034], then embedding the RFID tag to form a smooth surface (Fig. 2, surface on right) using a pressing/molding process [0036]. Asp teaches the cover protects from abrasion damage [0013] and can be included to provide a barrier of protection from the heat generated during the molding process [0012].
It would have been prima facie obvious to a person of ordinary skill in the art prior to the time of filing to use the known technique of encapsulating or encasing the RFID chip to protect it from heat and the molten primary article material during the molding process, taught by Asp, to improve the similar record-making press process of Ranc in the same way; resulting in separating the elastic record material from the embedded RFID tag by a protective membrane, with the protected RFID tag similarly glued to the record label in a record-making process, for improved heat protection and resistance to abrasion during processing.
10. The record of claim 1 and further comprising: a first film interposed between the electronic authentication tag and the disk; a label; a second film interposed between the electronic authentication tag and the label; wherein the first and second film are also embedded within the disk.
With respect to claim 10, Ranc teaches at least one label, wherein the electronic authentication tag is between the label and the disk. Ranc teaches the RFID device is bonded to the paper label with glue [P. 4, ¶ 3-4], then pressed to form a vinyl record with the RFID device in contact with the vinyl [P. 2, ¶ 5; P. 4, ¶ 2, 5].
Ranc is silent on a cover separating the embedded RFID tag and the elastic material.
However, the prior art of Asp teaches using membrane layers (Fig. 2, items 10a-10b) for encasing or encapsulating an RFID tag (Fig. 2, item 11) to separate in from the main product material [0033-0034], then embedding the RFID tag to form a smooth surface (Fig. 2, surface on right) using a pressing/molding process [0036]. Asp teaches the cover protects from abrasion damage [0013] and can be included to provide a barrier of protection from the heat generated during the molding process [0012].
It would have been prima facie obvious to a person of ordinary skill in the art prior to the time of filing to use the known technique of encapsulating or encasing the RFID chip to protect it from heat and the molten primary article material during the molding process, taught by Asp, to improve the similar record-making press process of Ranc in the same way; resulting in separating the elastic record material from the embedded RFID tag by a protective membrane, with the protected RFID tag similarly glued to the record label in a record-making process, for improved heat protection and resistance to abrasion during processing.
11. The record of claim 10 and further comprising: a first adhesive on a surface of the first film, the first adhesive adhering the first film to the electronic authentication tag; and a second adhesive on a surface of the authentication tag, the second adhesive adhering the electronic authentication tag to the second film.
With respect to claim 11, Asp teaches a first adhesive on a surface of the first film, the first adhesive adhering the first film to the electronic authentication tag; and a second adhesive on a surface of the authentication tag, the second adhesive adhering the electronic authentication tag to the second film. Asp teaches “the RFID tag 11 can bonded between the film layers 10a, 10b utilizing accepted and compatible adhesives [0031]” and “lines of adhesives can be selectively placed across the interior confronting faces of the films 10a, 10b during creation or construction of the laminate [0032]”.
Claims 5-9 are rejected under 35 U.S.C. 103 as being unpatentable over Ranc (WO2019012207A1), as set forth above in the rejection of claim 1, and further in view of Hagemann (US20080103944A1) and Mulas (US20230031817A1, with foreign application IT102020000000091 priority date of 1/7/2020).
5. The record of claim 1, wherein the certain information includes a unique identification code pointing to a non-fungible token (NFT).
With respect to claim 5, as set forth in the rejection of claim 1, Ranc is silent on the specific information that is stored on the NFC, although it would have been prima facie obvious that the information stored on the electronic chip could include authentication information related to the vinyl record within which it was embedded.
Ranc is silent on the information including a unique identification code pointing to a non-fungible token (NFT).
However, the prior art of Hagemann provides evidence that information on an embedded RFID tag can provide a unique identification code (UIC) [0092, 0094]. Hagemann teaches the RFID tag with a UIC is feasible for documenting, or prima facie obviously authenticating, the specific embedded article [0096].
It would have been prima facie obvious to a person of ordinary skill in the art prior to the time of filing to substitute the RFID tag information containing a UIC, taught by Hagemann, in place of the RFID tag information of Ranc. This modification would predictably result in a modified RFID tag containing a UIC feasible for authentication for the article taught by Ranc, in view of Hagemann.
Ranc, in view of Hagemann, is silent on the UIC linking to a Non-Fungible Token.
However, the prior art of Mulas teaches an RFID tag can comprise a unique graphic identification code for a specific article, wherein the tag identification code can correspond to an NFT of the article [0021].
It would have been prima facie obvious to a person of ordinary skill in the art prior to the time of filing to apply the known technique of linking the UIC of an RFID tag to a non-fungible token, taught by Mulas, to improve the vinyl record article containing an RFID tag, taught by Ranc, in view of Hagemann. This modification is ready for improvement as it requires only a programming change to the RFID tag, and predictably would result in a product wherein the RFID tag contains a UIC code that links to an NFT.
6. The record of claim 5, wherein the NFT is one of: unique to a particular record, unique to a particular set of records, or unique to a particular series of records.
With respect to claim 6, as set forth in the rejection of claim 5, Mulas teaches the NFT can be a unique graphic identification code for a specific article, wherein the tag identification code can correspond to an NFT of the article [0021], which teaches the NFT can be one of: unique to a particular record, unique to a particular set of records, or unique to a particular series of records.
7. The record of claim 5, wherein the unique identification code is programmed into the electronic authentication tag prior to the electronic authentication tag being embedded into the disk.
With respect to claim 7, Mulas teaches an embodiment wherein the unique identification code comprising an NFT is programmed into the electronic authentication tag after to the electronic authentication tag being embedded into the article. In this embodiment, an NFT is made for the unique ‘game-worn’ athletic jersey in which the RFID is embedded, with the NFT picture taken of the jersey during or after the sports event [0024, 0030].
However, this single-colored vinyl album article of Ranc, in view of Hagemann and Mulas, is not unique in appearance from the other records in its production line, and it would have been prima facie obvious to a person of ordinary skill in the art prior to the time of filing that the NFT having a related picture to the article (e.g., numbered picture of the artist, album art, etc.) could be programmed into the electronic authentication tag at any time prior to or after the electronic authentication tag being embedded into the disk with a high probability of success and without unexpected results.
8. The record of claim 5, wherein the electronic authentication tag is locked after the unique identification code is stored in the electronic authentication tag.
With respect to claim 8, Mulas teaches an RFID tag use to authenticate an article, wherein the tag is locked to prevent reprogramming [0074].
It would have been prima facie obvious to a person of ordinary skill in the art prior to the time of filing to apply a known technique of locking an RFID tag’s encoded information, taught by Mulas, to improve the article of Ranc, in view of Hagemann and Mulas, in the same way. This would yield the predictable results of a record containing a locked RFID tag that could not be reprogrammed, which would prevent counterfeiting or a loss of the authentication.
9. The record of claim 5, wherein the unique identification code is encoded.
With respect to claim 9, as set forth in the rejection of claim 5, Mulas teaches a unique graphic identification code is encoded for an article, wherein the tag identification code can correspond to an NFT of the article [0021].
Claim 12 is rejected under 35 U.S.C. 103 as being unpatentable over Ranc (WO2019012207A1), as set forth above in the rejection of claim 1, and further in view of Brown (US20210283872A1).
12. The record of claim 1, wherein the disk has a plurality of colors which produce a visual pattern.
With respect to claim 12, Ranc is silent on the disk having a plurality of colors which produce a visual pattern.
However, the prior art of Brown teaches a puck, which is pressed to form a vinyl record, can comprise multiple colors of vinyl resin to produce a record having a unique pattern [0002, 0052].
It would have been prima facie obvious to a person of ordinary skill in the art prior to the time of filing to substitute a multi-colored vinyl record formed by pressing a plurality of vinyl resin colors, taught by Brown, in place of the single-colored record taught by Ranc, if were aesthetically desired to produce a record having a unique multi-colored pattern.
Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to GREGORY C GROSSO whose telephone number is (571)270-1363. The examiner can normally be reached on M-F 8AM - 5PM.
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If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Abbas Rashid can be reached on 571-270-7457. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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GREGORY C. GROSSO
Examiner
Art Unit 1748
/GREGORY C. GROSSO/Examiner, Art Unit 1748
/Abbas Rashid/Supervisory Patent Examiner, Art Unit 1748
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