DETAILED ACTION
Acknowledgements
The amendment filed 1/14/2026 is acknowledged.
Claims 1-17 are pending.
Claims 7-16 are withdrawn.
Claims 1-6 and 17 have been examined.
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 .
Response to Amendment/Arguments
Regarding the rejection of the claims under 35 USC 101 for being directed to an abstract idea, applicant states that the claims do not fall within the “certain methods of organizing human activity” grouping of abstract ideas because the cited elements involve cryptographic operations, digital signature verification, blockchain-based distributed ledger transactions, and hash chain implementations, which are not activities that a human can perform by hand or in mind. Applicant also states that the claims are analogous to Example 35 of the 2019 PEG because they recite specific technological processes that improve the functioning of blockchain-based digital media distribution systems. Applicant also states that the Office’s analysis is incorrect because it improperly strips away the technological limitations. Further, applicant states that the claims address a technical problem of cybersecurity risks associated with digital file transfer and sharing.
Applicant additionally states that the claims provide a technical improvement to computer technology, because the request is signed by the private key, and the system verifies the request based on the public key of the first user. Applicant states that this procedure provides a cybersecurity improvement because it uses the key pair and authenticates the transfer request without requiring the first user to share their private key. Applicant further states the claims of the present application are necessarily rooted in blockchain technology to overcome the problem of cybersecurity risks in digital media transfers.
Examiner notes, however, that the claim recites steps which involve storing a record of content along with security information and a set of rules or a license that governs the content, receiving a request, accepting or allowing a transaction to take place to transfer the record, and obtaining usage or playback information for the content. This is an abstract concept because it is a commercial or legal interaction that falls within the “certain methods of organizing human activity” grouping of abstract ideas. The rejection identifies the specific limitations that recite this abstract idea as “. . . storing a . . . token configured for persisted distribution within an . . . ledger, the . . . token including: a . . . media . . . function to verify an authenticity of a . . . tokenized . . . media . . ., an associated cryptographic key pair for the . . . media . . . being tokenized, wherein the cryptographic key pair includes a public key and a private key, and . . . a string . . . that define a set of stored rules attached to the . . . media . . ., the set of stored rules including a . . . ledger protocol and conditions that define a change in status associated with the . . . media . . . as the . . . token is distributed within the . . . ledger with a unique . . . signature,” and “to transfer an amount of . . . token from a first user to a second user by: receiving a request from the first user, wherein the request includes a public key of the first user and a second user’s wallet address within the . . . ledger, and the request is . . . signed by a private key of the first user, and verifying the request based on a . . . signature of the first user and the public key of the first user, and implementing a transaction for the amount of . . . token from the first user to the second user within the . . . ledger after verification, wherein . . . utilize the . . . function to obtain playback data for the . . . media.” This analysis is not an improper stripping away of the technological limitations, but rather identifies the limitations which recite the abstract idea, in line with the analysis required by Step 2A Prong One, and MPEP 2106.04(a) which states that “[e]xaminers should determine whether a claim recites an abstract idea by (1) identifying the specific limitation(s) in the claim under examination that the examiner believes recites an abstract idea, and (2) determining whether the identified limitations(s) fall within at least one of the groupings of abstract ideas listed above.” The technological elements, such as the use of a system comprising non-transitory memory storing a digital token and a host server including a processor coupled to the memory, as well as a digital media file, an electronic distributed ledger, data in the form of a string of bytes, a digital signature, and a hash chain function, are additional elements beyond the abstract idea. The use of these additional elements does not provide an improvement to the functioning of blockchain-based digital media distribution systems or provide a solution to the technical problem of cybersecurity risks associated with digital file transfer and sharing. Rather, these additional elements are only used to carry out the steps recited in the abstract idea, which are steps for using a computer as a tool for storing a record of content along with security information and a set of rules or a license that governs the content, receiving a request, accepting or allowing a transaction to take place to transfer the record, and obtaining usage or playback information for the content. The claims do not improve the blockchain, but only use the blockchain as a tool for storing and retrieving data. Thus, the use of these additional elements does not provide a practical application or significantly more than the abstract idea because it only involves using a computer as a tool to automate the abstract idea. Further, the use of a private key to sign the request and a public key to verify the request also does not provide a technical improvement because verifying a digital signature is the digital equivalent of verifying a regular signature, and is implemented by performing mathematical calculations. Therefore, it is abstract because it only involves performing a mathematical computation on the information. Thus, the use of a key pair to verify information also does not provide a practical application or significantly more than the abstract idea.
Regarding applicant’s citation of Example 35, which applicant described as being titled “Blockchain Transaction Processing” and as reciting steps involves in maintaining a distributed ledger, examiner notes that this example does not exist in the 2019 PEG examples. Example 35 of the 2019 PEG examples deals with the use of an ATM machine in a transaction.
Election/Restrictions
Applicant’s election without traverse of Group I, claim 1-6, in the reply filed on 6/15/2023 is acknowledged.
Claims 7-16 are withdrawn from further consideration pursuant to 37 CFR 1.142(b) as being drawn to a nonelected group, there being no allowable generic or linking claim. Election was made without traverse in the reply filed on 6/15/2023.
Priority
Applicant’s claim for the benefit of a prior-filed application under 35 U.S.C. 119(e) or under 35 U.S.C. 120, 121, 365(c), or 386(c) is acknowledged. Applicant has not complied with one or more conditions for receiving the benefit of an earlier filing date under 35 U.S.C. 119(e) as follows:
The later-filed application must be an application for a patent for an invention which is also disclosed in the prior application (the parent or original nonprovisional application or provisional application). The disclosure of the invention in the parent application and in the later-filed application must be sufficient to comply with the requirements of 35 U.S.C. 112(a) or the first paragraph of pre-AIA 35 U.S.C. 112, except for the best mode requirement. See Transco Products, Inc. v. Performance Contracting, Inc., 38 F.3d 551, 32 USPQ2d 1077 (Fed. Cir. 1994).
The disclosure of the prior-filed application, Application No. 60/253,675 (“‘675 Application”), fails to provide adequate support or enablement in the manner provided by 35 U.S.C. 112(a) or pre-AIA 35 U.S.C. 112, first paragraph for one or more claims of this application.
Specifically, claim 1 recites “an associated cryptographic key pair for the digital media file being tokenized, wherein the cryptographic key pair includes a public key and a private key,” and “receiving a request from the first user, wherein the request includes a public key of the first user and the second user's wallet address within the electronic distributed ledger, and the request is digitally signed by a private key of the first user, and verifying the request based on a digital signature of the first user and the public key of the first user, and implementing a transaction for the amount of digital token from the first user to the second user within the electronic distributed ledger after verification.” Claim 4 also recites “wherein the cryptographic hash function includes the public and private key pair.” The ‘675 Application does not disclose a key pair associated with the digital media file, the use of a request including a public key of the first user and a wallet address of the second user within the electronic distributed ledger, where the request is digitally signed by a private key of the first user, verifying the request based on a digital signature of the first user and the public key of the first user, or a hash function including a public and private key pair. Therefore, claims 1-6 and 17 do not obtain the benefit of the filing date of the ‘675 Application.
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 1-6 and 17 are rejected under 35 U.S.C. 101 because the claimed invention is directed to an abstract idea without significantly more.
In the instant case, claims 1-6 and 17 are directed to a system comprising a non-transitory memory and a host server including a processor coupled to the memory. Therefore, the claim fall within the four statutory categories of invention.
The claims recite storing a record of content along with security information and a set of rules or a license that governs the content, permitting a transfer of the content after verifying a transfer request from a first user to a second user, and obtaining usage information about the content, which is an abstract idea. Specifically, the claims recite “. . . storing a . . . token configured for persisted distribution within an . . . ledger, the . . . token including: a . . . media . . . function to verify an authenticity of a . . . tokenized . . . media . . ., an associated cryptographic key pair for the . . . media . . . being tokenized, wherein the cryptographic key pair includes a public key and a private key, and . . . a string . . . that define a set of stored rules attached to the . . . media . . ., the set of stored rules including a . . . ledger protocol and conditions that define a change in status associated with the . . . media . . . as the . . . token is distributed within the . . . ledger with a unique . . . signature,” and “to transfer an amount of . . . token from a first user to a second user by: receiving a request from the first user, wherein the request includes a public key of the first user and a second user’s wallet address within the . . . ledger, and the request is . . . signed by a private key of the first user, and verifying the request based on a . . . signature of the first user and the public key of the first user, and implementing a transaction for the amount of . . . token from the first user to the second user within the . . . ledger after verification, wherein . . . utilize the . . . function to obtain playback data for the . . . media,” which is grouped within the “certain methods of organizing human activity” grouping of abstract ideas in prong one of step 2A of the Alice/Mayo test (See 2019 Revised Patent Subject Matter Eligibility Guidance, 84 Fed. Reg. 50, 52, 54 (January 7, 2019)) because it describes a process for storing a record of content and its security information and license or rules governing the content, and permitting a transfer of the content from a first user to a second user by receiving a request signed by the first user, verifying the first user’s signature, accepting a transaction to transfer the content, and obtaining usage information about the content, which is a commercial or legal interaction. Finally, examiner notes that the use of a public key to verify a digital signature only involves performing a mathematical computation on the information. Thus, this feature would also be abstract because it recites a mathematical calculation which is a mathematical concept. Accordingly, the claims recite an abstract idea (See pages 7, 10, Alice Corporation Pty. Ltd. v. CLS Bank International, et al., US Supreme Court, No. 13-298, June 19, 2014; 2019 Revised Patent Subject Matter Eligibility Guidance, 84 Fed. Reg. 50, 53-54 (January 7, 2019)).
This judicial exception is not integrated into a practical application because, when analyzed under prong two of step 2A of the Alice/Mayo test (See 2019 Revised Patent Subject Matter Eligibility Guidance, 84 Fed. Reg. 50, 54-55 (January 7, 2019)), the additional elements of the claims such as the use of a system comprising non-transitory memory storing a digital token and a host server including a processor coupled to the memory, as well as a digital media file, an electronic distributed ledger, data in the form of a string of bytes, a digital signature, and a hash chain function, to implement the features merely involves using a computer as a tool to perform an abstract idea. Specifically, these additional elements perform the features of “. . . storing a . . . token configured for persisted distribution within an . . . ledger, the . . . token including: a . . . media . . . function to verify an authenticity of a . . . tokenized . . . media . . ., an associated cryptographic key pair for the . . . media . . . being tokenized, wherein the cryptographic key pair includes a public key and a private key, and . . . a string . . . that define a set of stored rules attached to the . . . media . . ., the set of stored rules including a . . . ledger protocol and conditions that define a change in status associated with the . . . media . . . as the . . . token is distributed within the . . . ledger with a unique . . . signature,” and “to transfer an amount of . . . token from a first user to a second user by: receiving a request from the first user, wherein the request includes a public key of the first user and a second user’s wallet address within the . . . ledger, and the request is . . . signed by a private key of the first user, and verifying the request based on a . . . signature of the first user and the public key of the first user, and implementing a transaction for the amount of . . . token from the first user to the second user within the . . . ledger after verification, wherein . . . utilize the . . . function to obtain playback data for the . . . media.” The use of a processor/computer as a tool to implement the abstract idea does not integrate the abstract idea into a practical application because it requires no more than a computer performing functions that correspond to acts required to carry out the abstract idea. The additional elements do not involve improvements to the functioning of a computer, or to any other technology or technical field (MPEP 2106.05(a)), the claims do not apply the abstract idea with, or by use of, a particular machine (MPEP 2106.05(b)), the claims do not effect a transformation or reduction of a particular article to a different state or thing (MPEP 2106.05(c)), and the claims do not apply or use the abstract idea in some other meaningful way beyond generally linking the use of the abstract idea to a particular technological environment, such that the claim as a whole is more than a drafting effort designed to monopolize the exception (MPEP 2106.05(e) and Vanda Memo). Therefore, the claims do not, for example, purport to improve the functioning of a computer. Nor do they effect an improvement in any other technology or technical field. Accordingly, the additional elements do not impose any meaningful limits on practicing the abstract idea, and the claims are directed to an abstract idea.
The claims do not include additional elements that are sufficient to amount to significantly more than the judicial exception because, when analyzed under step 2B of the Alice/Mayo test (See 2019 Revised Patent Subject Matter Eligibility Guidance, 84 Fed. Reg. 50, 52, 56 (January 7, 2019)), the additional elements of using of a system comprising non-transitory memory storing a digital token and a host server including a processor coupled to the memory, as well as a digital media file, an electronic distributed ledger, data in the form of a string of bytes, a digital signature, and a hash chain function to implement the features amounts to no more than using a computer or processor to automate and/or implement the abstract idea of storing a record of content along with security information and a set of rules or a license that governs the content, permitting a transfer of the content after verifying a transfer request from a first user to a second user, and obtaining usage information about the content. As discussed above, taking the claim elements separately, these additional elements perform the features of “. . . storing a . . . token configured for persisted distribution within an . . . ledger, the . . . token including: a . . . media . . . function to verify an authenticity of a . . . tokenized . . . media . . ., an associated cryptographic key pair for the . . . media . . . being tokenized, wherein the cryptographic key pair includes a public key and a private key, and . . . a string . . . that define a set of stored rules attached to the . . . media . . ., the set of stored rules including a . . . ledger protocol and conditions that define a change in status associated with the . . . media . . . as the . . . token is distributed within the . . . ledger with a unique . . . signature,” and “to transfer an amount of . . . token from a first user to a second user by: receiving a request from the first user, wherein the request includes a public key of the first user and a second user’s wallet address within the . . . ledger, and the request is . . . signed by a private key of the first user, and verifying the request based on a . . . signature of the first user and the public key of the first user, and implementing a transaction for the amount of . . . token from the first user to the second user within the . . . ledger after verification, wherein . . . utilize the . . . function to obtain playback data for the . . . media.” These functions or features correspond to the actions required to perform the abstract idea. Viewed as a whole, the combination of elements recited in the claims merely recite the concept of storing a record of content along with security information and a set of rules or a license that governs the content, permitting a transfer of the content after verifying a transfer request from a first user to a second user, and obtaining usage information about the content. Therefore, the use of these additional elements does no more than employ the computer as a tool to automate and/or implement the abstract idea. The use of a computer or processor to merely automate and/or implement the abstract idea cannot provide significantly more than the abstract idea itself (MPEP 2106.05 (f) & (h)). Therefore, the claim is not patent eligible.
Dependent claims 2-6 and 17 further describe the abstract idea of storing a record of content along with security information and a set of rules or a license that governs the content, permitting a transfer of the content after verifying a transfer request from a first user to a second user, and obtaining usage information about the content. Specifically, claims 2-4 describes the set of rules, and claims 5-6 describe the change in status of the token, but do not require any steps or functions to be performed. Claim 17 further describes verifying the request, which is part of the abstract idea. The dependent claims do not include additional elements that integrate the abstract idea into a practical application or that provide significantly more than the abstract idea. Therefore, the dependent claims are also not patent eligible.
Statement Regarding Prior Art
The closest prior art of Rae, et al. (US 2017/0116693) (“Rae”) discloses a system for tokenization of digital media, comprising: a non-transitory memory, storing a digital token configured for persisted distribution within an electronic distributed ledger (Rae ¶¶ 44), the digital token including: a digital media file (Rae ¶¶ 38, 77), an associated key for the digital media file being tokenized (Rae ¶¶ 4-6, 67, 71), and a string of bytes that define a set of stored rules attached to the digital media file, the set of stored rules including a distributed ledger protocol and conditions that define a change in status associated with the digital media file as the digital token is distributed within the electronic distributed ledger with a unique digital signature (Rae ¶¶ 33, 37, 42, 66), and a host server, including a processor coupled to the memory and configured to transfer an amount of digital token from a first user to a second user by: receiving a request from the first user, wherein the request includes a public key of the first user and the second user’s wallet address within the electronic distributed ledger, and the request is digitally signed by a private key of the first user (Rae ¶¶ 20, 65, 69, 82), and verifying the request, and accepting a transaction of the amount of digital token from the first user to the second user within the electronic distributed ledger after verification, to allow the second user to transfer the amount of digital token (Rae ¶¶ 20, 33-35, 46, 56, 64-65, 78-79, 81-87).
Additionally, Satoshi Nakamoto, “Bitcoin: A Peer-to-Peer Electronic Cash System,” August 21, 2008 (“Nakamoto”) discloses verifying the request based on a digital signature of the first user and the public key of the first user (Nakamoto Section 2 “Transactions”; Section 3 “Timestamp Server”). Glover (US 2012/0317414) further discloses an associated cryptographic key pair for the digital media file, wherein the cryptographic key pair includes a public key and a private key (Glover Figure 1; ¶¶ 34, 36, 38, 49).
However, the prior art does not disclose, neither singly nor in combination, the specific use of both an electronic distributed ledger and a hash chain function in transferring and tracking a media file. Specifically, the prior art does not disclose a digital media file having a hash chain function used to verify an authenticity of a transferred tokenized digital media file, and a host server utilizing the hash chain function to obtain playback data for the digital media file after verifying a request to transfer an amount of digital token from a first user to a second user and implementing a transaction for the amount of digital token from the first user to the second user within the electronic distributed ledger.
Conclusion
The prior art made of record and not relied upon is considered pertinent to applicant's disclosure.
McCoy, et al. (US 2016/0323109) (“McCoy”) discloses managing digital content and corresponding rights using a blockchain, which involves registering rights of digital content items on a blockchain (McCoy ¶ 29) as well as transactions related to the content items (McCoy ¶ 43, 46).
Pennanen, et al. (US 2015/0356555) (“Pennanen”) discloses that the request further includes token information including which token and the amount of token be transfer, and verifying the request includes verifying that the first user have sufficient token balance to transfer (Pennanen ¶¶ 25, 65-66).
Any inquiry concerning this communication or earlier communications from the examiner should be directed to Mohammad A. Nilforoush whose telephone number is (571)270-5298. The examiner can normally be reached Monday-Friday 12pm-7pm.
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/Mohammad A. Nilforoush/Primary Examiner, Art Unit 3697