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 .
Claims 1-20 are presented for examination.
Receipt is acknowledged of IDS filed on 12/12/2025.
This application is a CON of 18/706,478 filed on 05/01/2024 which is a 371 of PCT/US2022/049597 filed on 11/10/2022 which has PRO 63/277,850 filed on 11/10/2021.
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 1-20 are rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-10 of U.S. Patent No. 18/418,478 (hereinafter referred as '478). Although the claims at issue are not identical, they are not patentably distinct from each other because all the claims are expressly found in the claimed application. For instance, claim 1 of the present application recites the following limitations:
A method for forming a trust anchor for a part, comprising: providing the part; forming the trust anchor for the part by printing a geometrical code on a surface of the part; and imbedding a cryptographic hash or a perceptual hash within an interior of the part using programmable invisible ink comprising porous regions within the part, wherein the porous regions are readable by X-ray, interferometry, or any combination thereof.
Whereas claim 1 of '478 application, the applicant claims:
A method for providing an identification mark in a structure comprising: providing a customized programmable invisible ink onto a selected area of the structure by using an inherent porosity or intentionally added porosity to the selected area of the structure, wherein the pores are smaller than can be imaged with X-ray radiography or CT scanning; converting the porosity of the customized programmable invisible ink to a digital data and storing the digital data in a data file; reading using X-ray interferometry said customized programmable invisible ink.
The instant claims obviously encompass the claimed invention of '478 patent application and differ only by terminology. For instance, claim 1 of the present invention recites “trust anchor for the part by printing a geometrical code on a surface of the part…” whereas '478 patent discloses “converting the porosity of the customized programmable invisible ink to a digital data …” . Furthermore, both applications recite “a customized programmable invisible ink…”. Claim 1 of the present invention recites “imbedding a cryptographic hash or a perceptual hash…”, wherein similar limitations are disclosed in claim 7 of '478 patent application. To the extent that the present claims are therefore generic to the claimed invention of '478 patent application, In re Goodman 29 USPQ 2d 2010 CAFC 1993.
The obviousness-type double patenting rejection is a judicially established doctrine based upon public policy and is primarily intended to prevent prolongation of the application term by prohibiting claims in a second application not patentably distinct from claims of a first application. In re Vogel, 164 USPQ 619 (CCPA 1970).
Claims 2-3 recite limitations not enclosed in any claims of '478 patent application. For instance, claim 2 recites “printing a QR code on the surface of the part”.
Claim 4 recites similar limitations as of claim 7 of '478 patent application.
Claims 5-7 recite limitations not enclosed in any claims of '478 patent application. For instance, '478 patent application does not teach “imbedding the cryptographic hash to provide binary assurance of part authenticity…”.
Re Claims 8 and 15: see the examiner’s explanation of claim 1 as set forth above.
Re Claims 9-10 and 16-17: see claims 2-3 as set forth above.
Claims 11 and 18 recite similar limitations as of claim 7 of '478 patent application.
Re Claims 12-14 and 19-20: see the explanation of 5-7 above.
Conclusion
The prior art made of record and not relied upon is considered pertinent to applicant's disclosure.
Ripstein (US 2006/0078673) teaches method for printing using invisible inks.
Yu (US 2005/0028411) teaches promotional item having fluorescent or phosphorescing ink indicia.
Melick et al. (US 2005/0258250) teaches method and apparatus for capturing and decoding an image of a remotely located bar code.
Butters et al. (US 2021/0119771) teaches system and method for providing provenance and anti-counterfeiting of a part using blockchain technology.
Any inquiry concerning this communication or earlier communications from the examiner should be directed to EDWYN LABAZE whose telephone number is (571)272-2395. The examiner can normally be reached 8:30AM-5:00PM.
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, Mr. STEVE PAIK can be reached at 571-272-2404. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/EDWYN LABAZE/Primary Examiner, Art Unit 2876
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