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 .
Acknowledgment
This Action is in response to the amendment filed on October 30, 2025. Claims 1-16 are pending. Claims 1-8 have been withdrawn by Applicant’s election and claims 9-16 are fully examined.
Response to Arguments
With respect to the rejection of claim 9 under 103, Applicant merely argues that the newly amended subject matter “documenting process taken to prove authenticity of the creative work” is not taught by the cited art. Applicant’s arguments with respect to claim 9 have been considered but are moot in light of new ground of rejection. The new ground of rejection does not rely on any reference applied in the prior rejection of record for any teaching or matter specifically challenged in the argument.
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.
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 nonobviousness.
Claim 9 is rejected under 35 U.S.C. 103 as being unpatentable over Jordan (US Patent Publication No. 2020/0275166) in view of Padmanabhan (US Patent Publication No. 2020/0250661.)
With respect to claim 9, Jordan teach:
receiving, from a user, an electronic submission, the electronic submission including a creative work and supporting information associated with creation of the creative work; (receiving a query from a consumer (i.e., user) including a digital content (i.e., creative work) and metadata (i.e., supporting information): [0027]-[0029], [0031])
storing the electronic submission on a blockchain and timestamping the submission; (data is stored in a ledger: [0022], [0029], [0035] the data includes date and time: [0021], [0034])
validating if the creative work associated with the electronic submission is original; (verifying authenticity of digital content and prove provenance: [0029], [0036])
Jordan does not explicitly teach:
generating a package of proof documenting process taken to prove authenticity of the creative work if the electronic submission is validated.
However, Padmanabhan teach:
verify authenticity of an asset (i.e., creative work): ([0042])
generating a package of proof documenting process taken to prove authenticity of the creative work if the electronic submission is validated. (a certificate of authenticity of the asset is generated: [0042], [0380])
Therefore, it would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to incorporate the certificate of authenticity, as taught by Padmanabhan into the digital content provenance verification of Jordan , in order to prevent fraud. (Padmanabhan : Abstract, [0005])
Claims 10-14 and 16 are rejected under 35 U.S.C. 103 as being unpatentable over Jordan , in view of Padmanabhan, further in view of Andon (US Patent Publication No. 2020/0273048.)
With respect to claim 10, Jordan and Padmanabhan teach the limitations of claim 9.
Moreover, Padmanabhan teach:
minting a validated token, the validated token including at least the creative work and the package of proof. (create a token that includes the asset (i.e. creative work) with embedded information/metadata: [0178]-[0180], [0189], the embedded information includes audit trail (i.e., package of proof): [0244]-[0246], claim 4)
Therefore, it would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to incorporate the audit trail included into a created asset, as taught by Padmanabhan into the digital content provenance verification of Jordan , in order to provide auditability. (Padmanabhan : Abstract, [0179])
Jordan and Padmanabhan do not explicitly teach that validated token is an NFT.
However, Andon teaches generating cryptographic digital asset: [0011], [0013], [0049], [0055], [0074], the cryptographic digital asset is an NFT: [0046], [0049]-[0050])
Therefore, it would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to incorporate the provisioning of digital assets for authenticated products, as taught by Andon into the digital content provenance verification of Jordan and Padmanabhan, in order to identify unauthorized counterfeit products. (Andon et al.: Abstract, [0003])
With respect to claim 11, Jordan and Padmanabhan and Andon teach the limitations of claim 10.
Moreover, Andon teach:
minting a child NFT associated with the validated NFT. (breed digital assets, include parent tokens: [0092], and child tokens: [0098])
Therefore, it would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to incorporate the provisioning of digital assets for authenticated products, as taught by Andon into the digital content provenance verification of Jordan and Padmanabhan, in order to identify unauthorized counterfeit products. (Andon et al.: Abstract, [0003])
With respect to claim 12, Jordan, Padmanabhan and Andon teach the limitations of claim 10.
Moreover, Andon teach:
minting a collectible NFT associated with the validated NFT. (digital collectibles: [0107], [0115])
Therefore, it would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to incorporate the provisioning of digital assets for authenticated products, as taught by Andon into the digital content provenance verification of Jordan and Padmanabhan, in order to identify unauthorized counterfeit products. (Andon et al.: Abstract, [0003])
With respect to claim 13, Jordan, Padmanabhan and Andon teach the limitations of claim 12.
Moreover, Andon teach:
monetizing the validated NFT or the collectible NFT via a monetization process. (user can acquire/purchase a cryptographic digital asset (i.e., NFT) for a price: [0108] in a marketplace: (i.e., monetization process): [0112], [0115])
Therefore, it would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to incorporate the provisioning of digital assets for authenticated products, as taught by Andon into the digital content provenance verification of Jordan and Padmanabhan, in order to identify unauthorized counterfeit products. (Andon et al.: Abstract, [0003])
With respect to claim 14, Jordan, Padmanabhan and Andon teach the limitations of claim 12.
Moreover, Andon teach:
wherein monetizing the validated NFT comprises at least one of:
monetizing via a tradeable NFT rewards program component;
monetizing via an IP collateralization component; monetizing via a licensing component;
monetizing via a fractional ownership component;
monetizing via a music publishing component;
monetizing via a transfer of ownership component; or (transfer ownership of digital asset: [0072], [0077], [0079])
monetizing via a tokenized insurance component.
The examiner notes that the claim recitation “at least one of…” indicates optional limitations separated with an “or.” It is sufficient for the prior art to teach one of the optional limitations.
Therefore, it would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to incorporate the provisioning of digital assets for authenticated products, as taught by Andon into the digital content provenance verification of Jordan and Padmanabhan, in order to identify unauthorized counterfeit products. (Andon et al.: Abstract, [0003])
With respect to claim 16, Jordan, Padmanabhan and Andon teach the limitations of claim 10.
Moreover, Jordan teach:
wherein storing the electronic submission on a blockchain and timestamping the submission comprises:
storing the electronic submission in an individual manner. (each portion of data is stored in a ledger: [0021]-[0022], [0029], [0035], data includes date and time in edit history: [0020]-[0021], [0034])
The examiner notes that “storing the electronic submission in an individual manner” is not defined in the claim or in the Specification, The Specification in paragraph [0036] describes “enable creative works to be created as a record on the blockchain in a batch manner (via batch timestamp component 118) or individually (via individual stakes claim component 122,)” however, no further detail in provided on a process of “storing the electronic submission in an individual manner.” Therefore, the claim limitation is interpreted as storing each electronic submission separately from other electronic submissions. In addition, Jordan , teaches storing edit history for each portion of digital content which is interpreted as digital content being stored individually.
Claim 15 is rejected under 35 U.S.C. 103 as being unpatentable over Jordan , in view of Padmanabhan and Andon , further in view of Papanikolas (US Patent Publication No. 2021/0097508.)
With respect to claim 15, Jordan, Padmanabhan and Andon teach the limitations of claim 10.
Jordan, Padmanabhan and Andon do not explicitly teach:
storing the electronic submission in a batch manner.
However, Papanikolas teaches:
wherein storing the electronic submission on a blockchain and timestamping the submission comprises:
storing the electronic submission in a batch manner. (FIG. 1, [0038]-[0039])
Therefore, it would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to incorporate minting and saving tokens in batch form, as taught by Papanikolas, into the digital content provenance verification of Jordan, Padmanabhan and Andon , in order to prevent large computational cost. (Papanikolas: Abstract, [0023]-[0025])
Conclusion
Applicant's amendment necessitated the new ground(s) of rejection presented in this Office action. Accordingly, THIS ACTION IS MADE FINAL. See MPEP § 706.07(a). Applicant is reminded of the extension of time policy as set forth in 37 CFR 1.136(a).
A shortened statutory period for reply to this final action is set to expire THREE MONTHS from the mailing date of this action. In the event a first reply is filed within TWO MONTHS of the mailing date of this final action and the advisory action is not mailed until after the end of the THREE-MONTH shortened statutory period, then the shortened statutory period will expire on the date the advisory action is mailed, and any nonprovisional extension fee (37 CFR 1.17(a)) pursuant to 37 CFR 1.136(a) will be calculated from the mailing date of the advisory action. In no event, however, will the statutory period for reply expire later than SIX MONTHS from the mailing date of this final action.
Any inquiry concerning this communication or earlier communications from the examiner should be directed to SIMA ASGARI whose telephone number is (571)272-2037. The examiner can normally be reached M-F 9am-6pm.
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/SIMA ASGARI/Examiner, Art Unit 3698
/PATRICK MCATEE/Supervisory Patent Examiner, Art Unit 3698