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
Claims 5-10 are objected to because of the following informalities: Claim 5 appears to be in independent format, but refers to claim 2. The applicant should include all the appropriate limitations into the claims without referring to any previous claim. 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.
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.
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.
Claims 1, 3, and 4 are rejected under 35 U.S.C. 103 as being unpatentable over Barron et al. in U.S. Patent Application Publication No. 2006/0196858 in view of Hodges in U.S. Patent No. Application No. 2019/0147397 A1.
Barron et al. discloses an asset (gemstone 120) that is held by a holder (122) positioned by a stack of motorized linear translation stages (124A,124B,124C; see paragraph 54) that are considered to be a positioning system and using the laser to create voxels (148; see paragraph 66) that are considered to be “gentle” since femtosecond laser pulses (see paragraph 50) are being used to create marks that are invisible to a 10X optical instrument (see paragraph 68), and an optical reading device (element 28A, 28B, or 28C) and a CCD (see element 166).
Barron et al. discloses operation software (see paragraph 49) and recognition software (see paragraphs 74-76) but Barron et al. does not disclose a blockchain.
Hodges teaches using a tracking system for precious gemstones (see paragraph 29) and further teaches using a blockchain repository that make it practically impossible to falsify or delete entries for better traceability (see paragraphs 116 and 117).
It would have been obvious to adapt Barron et al. in view of Hodges to provide this to make it practically impossible to falsify or delete entries for better traceability.
Regarding claim 3, Barron et al. disclose using a laser pulse energy from 20 nJ to 90 nJ (see paragraph 17), wherein Barron et al. teach marking diamonds, that is both a stone and an asset.
Regarding claim 4, Barron et al as modified by Hodges fail to disclose applying dream catcher mode for reading the nanotag. However, dream catcher mode is commonly used for enhancing shopping experience by combining product tracking with a serene environment. It could be done by adjusting the scanning speed or frequency to ensure smooth experience or to present the scanned data in an aesthetically pleasing way. Therefore, it would have been an obvious extension as taught by the prior art.
Allowable Subject Matter
Claims 2 and 5-10 are objected to as being dependent upon a rejected base claim, but would be allowable if rewritten in independent form including all of the limitations of the base claim and any intervening claims and upon filing of a terminal disclaimer.
The following is a statement of reasons for the indication of allowable subject matter: The applicant teaches a system and a method thereof for tracing a newly mined stone through a stream of commerce which includes at least a nanotag, a nanotag reader, a blockchain database for storing information related to the stone and associated with the nanotag, wherein a tagging unit coupled to a laser configured to create the nanotag using gentle modification without intentionally using an impurity within the stone, formed from voxels that are imperceptible when viewed at a magnification of 10× but visible to high magnification optical viewing methods; wherein the tagging unit is configured to uploaded information associated with the nanotag, through a communication connection, onto the blockchain; and wherein the information is encrypted upon uploading to the blockchain. These limitations in conjunction with other limitations in the claims were not shown by the prior art of record.
.Double Patenting
The nonstatutory double patenting rejection is based on a judicially created doctrine grounded in public policy (a policy reflected in the statute) so as to prevent the unjustified or improper timewise extension of the “right to exclude” granted by a patent and to prevent possible harassment by multiple assignees. A nonstatutory double patenting rejection is appropriate where the conflicting claims are not identical, but at least one examined application claim is not patentably distinct from the reference claim(s) because the examined application claim is either anticipated by, or would have been obvious over, the reference claim(s). See, e.g., In re Berg, 140 F.3d 1428, 46 USPQ2d 1226 (Fed. Cir. 1998); In re Goodman, 11 F.3d 1046, 29 USPQ2d 2010 (Fed. Cir. 1993); In re Longi, 759 F.2d 887, 225 USPQ 645 (Fed. Cir. 1985); In re Van Ornum, 686 F.2d 937, 214 USPQ 761 (CCPA 1982); In re Vogel, 422 F.2d 438, 164 USPQ 619 (CCPA 1970); In re Thorington, 418 F.2d 528, 163 USPQ 644 (CCPA 1969).
A timely filed terminal disclaimer in compliance with 37 CFR 1.321(c) or 1.321(d) may be used to overcome an actual or provisional rejection based on nonstatutory double patenting provided the reference application or patent either is shown to be commonly owned with the examined application, or claims an invention made as a result of activities undertaken within the scope of a joint research agreement. See MPEP § 717.02 for applications subject to examination under the first inventor to file provisions of the AIA as explained in MPEP § 2159. See MPEP § 2146 et seq. for applications not subject to examination under the first inventor to file provisions of the AIA . A terminal disclaimer must be signed in compliance with 37 CFR 1.321(b).
The filing of a terminal disclaimer by itself is not a complete reply to a nonstatutory double patenting (NSDP) rejection. A complete reply requires that the terminal disclaimer be accompanied by a reply requesting reconsideration of the prior Office action. Even where the NSDP rejection is provisional the reply must be complete. See MPEP § 804, subsection I.B.1. For a reply to a non-final Office action, see 37 CFR 1.111(a). For a reply to final Office action, see 37 CFR 1.113(c). A request for reconsideration while not provided for in 37 CFR 1.113(c) may be filed after final for consideration. See MPEP §§ 706.07(e) and 714.13.
The USPTO Internet website contains terminal disclaimer forms which may be used. Please visit www.uspto.gov/patent/patents-forms. The actual filing date of the application in which the form is filed determines what form (e.g., PTO/SB/25, PTO/SB/26, PTO/AIA /25, or PTO/AIA /26) should be used. A web-based eTerminal Disclaimer may be filled out completely online using web-screens. An eTerminal Disclaimer that meets all requirements is auto-processed and approved immediately upon submission. For more information about eTerminal Disclaimers, refer to www.uspto.gov/patents/apply/applying-online/eterminal-disclaimer.
Claims 1-10 are rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-19 of U.S. Patent No. 12,370,622 (herein after ‘622 Patent). Although the claims at issue are not identical, they are not patentably distinct from each other because the instant claimed invention is a broader recitation of the ‘622 Patent. For instance in claim 1 of the current application and in the ‘622 Patent, the applicant claim:
Application No. 19/209,550
Patent No. 12,370,622
A system for tracing a newly mined stone (rough) through a stream of commerce comprising: at least a nanotag; a nanotag reader; a processor; a database for storing information related to the stone and associated with the nanotag; and, at least one blockchain for storing at least one entry associated with the stone.
A tagging system, comprising: a tagging unit coupled to a laser configured to create a two-dimensional or three-dimensional, non-opaque identification etching using gentle modification without intentionally using an impurity with a pulse energy between 10 nJ and 300 nJ within a transparent or translucent stone, a transparent or translucent precious stone, a gem, a crystal, a transparent material, or a translucent material, formed from voxels that are imperceptible when viewed at a magnification of 10× but visible to high magnification optical viewing methods; wherein the tagging unit is configured to uploaded information associated with the identification etching, through a communication connection, onto a distributed ledger; and wherein the information is encrypted upon uploading to the distributed ledger, and an optical reading device consisting of a more than 10× magnification, asset holder, positioning system, electronic imaging sensor and software interfaced to the distributed ledger.
Thus, in respect to above discussions, it would have been obvious to an artisan at the time the invention was made to use the teaching of claims 1-19 of the ‘622 Patent as a general teaching for tracing newly mined stones or assets, to perform the same function as claimed in the present invention. The instant claims obviously encompass the claimed invention of the ‘622 Patent and differ only in terminology. The extent that the instant claims are broaden and therefore generic to claimed invention of ‘622 Patent [species], In re Goodman 29 USPQ 2d 2010 CAFC 1993, states that a generic claim cannot be issued without a terminal disclaimer, if a species claim has been previously been claimed in a co-pending application.
The obviousness-type double patenting rejection is a judicially established doctrine based upon public policy and is primarily intended to prevent prolongation of the patent term by prohibiting claims in a second patent not patentably distinct from the claims in a first paten. IN re Vogel, 164 USPQ 619 (CCPA 1970). A timely filed terminal disclaimer in compliance with 37 C.F.R. & 1.321(b) would overcome an actual or provisional rejection on this ground provided the conflicting application or patent is shown to be commonly owned with this application. See 37 C>FR> &1.78(d).
Conclusion
The prior art made of record and not relied upon is considered pertinent to applicant's disclosure. Thomas et al. in U.S. Patent Application Publication No. 2016/0342987 discloses using a blockchain that tracks ownership of commodities (see paragraph 68) and that the commodity may be artwork, comic books or precious stones (see paragraph 74). Kikuawa et al. in U.S. Patent Application Publication No. 2007/0030795 discloses a numerical aperture of .85 (see paragraph 51).
Any inquiry concerning this communication or earlier communications from the examiner should be directed to DANIEL ST CYR whose telephone number is (571)272-2407. The examiner can normally be reached M to F 8:00-8:00.
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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.
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DANIEL ST CYR
Primary Examiner
Art Unit 2876
/DANIEL ST CYR/Primary Examiner, Art Unit 2876