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 .
DETAILED ACTION
This communication is a Non-Final Office Action in response to communications received on 11/13/25.
Claims 1 and 13 have been amended.
Claims 1-20 are now pending and have been addressed below.
Continued Examination Under 37 CFR 1.114
A request for continued examination under 37 CFR 1.114, including the fee set forth in 37 CFR 1.17(e), was filed in this application after final rejection. Since this application is eligible for continued examination under 37 CFR 1.114, and the fee set forth in 37 CFR 1.17(e) has been timely paid, the finality of the previous Office action has been withdrawn pursuant to 37 CFR 1.114. Applicant's submission filed on 11/13/25 has been entered.
Examiner Note: Claims 1 and 11 include new limitations “tagging or making with a femtosecond laser; optical reading device configured with a magnification of more than 10X”. Specification is silent regarding a femtosecond laser and magnification of more than 10X. However, Para [0074] recites Exemplary tagging unit 403 configurations are also described with respect to U.S. patent application Ser. No. 16/429,784, the disclosure of which is incorporated herein. 16/429784 discloses a femtosecond laser ([0025]); optical reading device configured with a magnification of more than 10X ([0013]).
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 1-20 are rejected under 35 U.S.C. § 101 because the claimed invention is directed to a judicial exception without significantly more.
Step 1: Identifying Statutory Categories
In the instant case, claims 1-12 are directed to a method and Claims 13-20 are directed to a system. Thus, this claim falls within one of the four statutory categories. Nevertheless, the claim falls within the judicial exception of an abstract idea.
Step 2A: Prong 1 Identifying a Judicial Exception
Under Step 2A, prong 1, Claims 1-20 are rejected under 35 U.S.C. 101 because the claimed invention is directed to an abstract idea without significantly more. The independent claims 1 and 13 recite methods for registering title to a precious stone to provide verified ownership information of the precious stone including tagging or marking the precious stone with a tag at a sub-surface site; performing at least one of associating or updating information, including ownership information, with respect to the precious stone , where the information is stored in a distributed manner enabling automatic transaction validation; and, recording the associated and/or updated information, the tag is associated with an identification and the identification has been registered and wherein the sub-surface situs of the tag prevents modification of the tag; tag is read with a magnification of more than 10X
These limitations as drafted, are a process that, under its broadest reasonable interpretation, covers methods of organizing human activity (managing personal behavior or relationships or interactions between people (including social activities, teaching, and following rules or instructions)), but for the recitation of generic computer components. That is, other than reciting the structural elements (such as a femtosecond laser, a laser-based tagging device, distributed ledger, medium, optical reading device), the claims are directed to registering title to a precious stone to provide verified ownership information. If a claim limitation, under its broadest reasonable interpretation, covers performance of the limitation of organizing human activity but for the recitation of generic computer components, the claim recites an abstract idea.
Step 2A Prong 2 - This judicial exception is not integrated into a practical application because the claim merely describes how to generally “apply” the concept of receiving data, analyzing it, and providing/verifying identification information for precious stone. In particular, the claims only recites the additional element – as a femtosecond laser, a laser-based tagging device, distributed ledger, medium for recording information, optical reading device. The additional elements, are recited at a high-level of generality such that it amounts to no more than mere instructions to apply the exception using a generic computer component. Simply implementing the abstract idea on generic components is not a practical application of the abstract idea. Accordingly, this additional element does not integrate the abstract idea into a practical application because it does not impose any meaningful limits on practicing the abstract idea. a) The additional elements merely add the words “apply it” (or an equivalent) with the judicial exception, or mere instructions to implement an abstract idea on a computer, or merely uses a computer as a tool to perform an abstract idea, as discussed in MPEP 2106.05(f). The claims are directed to an abstract idea. When considered in combination, the claims do not amount to improvements to the function of a computer, or to any other technology or technical field, as discussed in MPEP 2106.05(a), applying the judicial exception with, or by use of, a particular machine, as discussed in MPEP 2106.05(b), effecting a transformation or reduction of a particular article to a different state or thing, as discussed in MPEP 2106.05(c), or applying or using the judicial exception in some other meaningful way beyond generally linking the use of the judicial exception to a particular technological environment, such that the claim as a whole is more than a drafting effort designed to monopolize the exception, as discussed in MPEP 2106.05(e). Accordingly, the additional elements do not integrate the abstract idea into a practical application because they does not impose any meaningful limits on practicing the abstract idea. Therefore, the claims are directed to an abstract idea.
Step 2B: Considering Additional Elements
The claimed invention is directed to an abstract idea without significantly more. The claim does not include additional elements that are sufficient to amount significantly more than the judicial exception. As discussed above with respect to integration of the abstract idea into a practical application, the claims describe how to generally “apply” to; provide verified ownership information for precious stone . The claim(s) do not include additional elements that are sufficient to amount to significantly more than the judicial exception because mere instructions to apply an exception using a generic computer component cannot provide an inventive concept. The independent claims do not include additional elements that are sufficient to amount to significantly more than the judicial exception. Even when viewed as a whole, nothing in the claim adds significantly more (i.e., an inventive concept) to the abstract idea. The claims are not patent eligible. The dependent claim(s) when analyzed as a whole are held to be patent ineligible under 35 U.S.C. 101 because the additional recited limitation(s) fail to establish that the claim(s) is/are not directed to an abstract idea. The dependent claims are not significantly more because they are part of the identified judicial exception. See MPEP 2106.05(g). The claims are not patent eligible. With respect to a femtosecond laser, laser-based tagging device, distributed ledger, medium for recording information, optical reading device these limitations are described in Applicant’s own specification as generic and conventional elements. See Applicants specification, Paragraph [0076] details “ distributed ledger 404 such as blockchain, [0018] medium is a digital token, a recorded chip or on a portable storage device. [0027] the data processor includes a volatile memory for storing instructions and/or data and/or a non-volatile storage, for example, a magnetic hard-disk and/or removable media, for storing instructions and/or data. [0042] reading of the tag/identification using reading device, such as an automated optical reader like a zoom-capable camera, smartphone, mobile device or microscope.” These are basic computer elements applied merely to carry out data processing such as, discussed above, receiving, analyzing, transmitting and displaying data, which fall under well-understood, routine and conventional functions of generic computers. Furthermore, the use of such generic computers to receive or transmit data over a network has been identified as a well understood, routine and conventional activity by the courts. See Symantec, 838 F.3d at 1321, 120 USPQ2d at 1362 (utilizing an intermediary computer to forward information); TLI Communications LLC v. AVAuto. LLC, 823 F.3d 607, 610, 118 USPQ2d 1744, 1745 (Fed. Cir. 2016) (using a telephone for image transmission); OIP Techs., Inc., v. Amazon.com, Inc., 788 F.3d 1359, 1363, 115 USPQ2d 1090, 1093 (Fed. Cir. 2015) (sending messages over a network); buySAFE, Inc. v. Google, Inc., 765 F.3d 1350, 1355, 112 USPQ2d 1093, 1096 (Fed. Cir. 2014) (computer receives and sends information over a network); but see DDR Holdings, LLC v. Hotels.com, L.P., 773 F.3d 1245, 1258, 113 USPQ2d 1097, 1106 (Fed. Cir. 2014) ("Unlike the claims in Ultramercial, the claims at issue here specify how interactions with the Internet are manipulated to yield a desired result-a result that overrides the routine and conventional sequence of events ordinarily triggered by the click of a hyperlink." (emphasis added)); Also see MPEP 2106.05(d) discussing elements that the courts have recognized as well-understood, routine and conventional activities in particular fields. Lastly, the computing device provides only a result-oriented solution which lacks details as to how the computer performs the claimed abstract idea. Therefore the processor/device amounts to mere instructions to apply the exception. See MPEP 2106.05(f). Dependent claims 2-12, and 14-20 add additional limitations, for example but these only serve to further limit the abstract idea, and hence are nonetheless directed towards fundamentally the same abstract idea as representative claims 1 and 13. Claims 2-4, 14-15 recites the information on at least one of an Internet of Things or cloud-based storage; providing medium. Claims 5-6, 16 recites encrypting the identification; identification is a public key. The encrypting, IoT, cloud based storage are recited at high level of generality and merely recited at “apply it” level. Claims 7-12, 17-20 recite tagging or marking precious stone, information includes ownership; rating an individual; verifying ownership. These limitations do not include an improvement to another technology or technical field, an improvement to the function of the computer itself, or meaningful limitations beyond generally linking the use of the abstract idea to a particular technological environment. See MPEP 2106.05d. Thus, nothing in the claim adds significantly more to an abstract idea. The claims are ineligible. Furthermore, these steps/components are not explicitly recited and therefore must be construed at the highest level of generality and are well-understood, routine and conventional limitations that amount to mere instructions to implement the abstract idea on a computer. Therefore, the claimed invention does not demonstrate a technologically rooted solution to a computer-centric problem or recite an improvement to another technology or technical field, an improvement to the function of any computer itself, applying the exception with, or by use of, a particular machine, effect a transformation or reduction of a particular article to a different state or thing, add a specific limitation other than what is well-understood, routine and conventional in the field, add unconventional steps that confine the claim to a particular useful application, or provide meaningful limitations beyond generally linking an abstract idea to a particular technological environment such as computing. Viewing the limitations as an ordered combination does not add anything further than looking at the limitations individually. Taking the additional claimed elements individually and in combination, the computer components at each step of the process perform purely generic computer functions. Viewed as a whole, the claims do not purport to improve the function of the computer itself, or to improve any other technology or technical field. Use of an unspecified, generic computer does not transform an abstract idea into a patent-eligible invention. Thus, the claim does not amount to significantly more than the abstract idea itself. Further, claims to a system and computer-readable storage medium are held ineligible for the same reason, e.g., the generically-recited computers add nothing of substance to the underlying abstract idea. Therefore, since there are no limitations in the claim that transform the exception into a patent eligible application such that the claim amounts to significantly more than the exception itself, the claims are rejected under 35 USC 101 as being directed to non-statutory subject matter. See (Alice Corporation Pty. Ltd. v. CLS Bank International, et al.).
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 (i.e., changing from AIA to pre-AIA ) 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 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.
Claims 1-2, 5-10, 12-14 and 16-20 are rejected under 35 U.S.C. 103 as being unpatentable over Kislev et al (US 2020/0184465) in view of Potemkin (US 2014/0312017 A1), further in view of Hui et al. (US 10,475,355B2) and Barron (RU 2357870 C1)
With respect to claims 1 and 13, Kislev discloses a method and a system for registering title to a precious stone to provide verified ownership information of the precious stone ([Abstract a method for recording a marked object, [0070] maintaining data relating to specific marked objects. Such objects may typically be valuable items, such as jewelry, precious stones, art pieces etc., which are embedded with specific and unique object-signature corresponding to a secure physical marking of the object), comprising:
Kislev discloses tagging or marking the precious stone with a tag at a surface site ([0024] suitable unique markings may be provided in accordance with a marking generation tool such that suitable markings may be authorized in accordance with data provided by one or more management servers. Accordingly, different markings may be associated with specific marking series and item identity as provided by said one or more management related servers.), [0070] maintaining data relating to specific marked objects. Such objects may typically be valuable items, such as jewelry, precious stones, art pieces etc., which are embedded with specific and unique object-signature corresponding to a secure physical marking of the object)
Kislev discloses performing at least one of associating or updating information, including ownership information, with respect to the precious stone on a distributed ledger ([0068] A data record (block-) chain associated with an object. The database entry includes several data pieces associated with the relevant object. Such data pieces include object indication, e.g. title, corresponding object description, data indicative of unique object marking, data about object ownership, and may also include data about mark reading parameters. [0069] when data about the object is updated, e.g. in response to changes of one or more object parameters, e.g. ownership, the update data pieces are added to an additional/new data block 110, linked to the previous data., [0077] maintaining database for marked object may utilize communication network platform based on a distributed blockchain-type database ); where the information is stored in a distributed manner, enabling automatic transaction validation ([0008] the management database may be managed by an authorizing/management centralized party and store information relating to physical and corresponding signature of the objects. The authorized body may authenticate the object and issue permits to record an object on the virtual system (including the management database and the management database). The blockchain database stores and manages the information regarding the ownership (and history of ownership) of the object, the object's origin, materials it is made of, current location and more., [0010])
Kislev discloses recording the associated and/or updated information on at least one medium ([0073] the blockchain database stores, in its one or more corresponding servers, details of ownership and ownership history (e.g. including a public key identifying the owner), additional details relating to the object, the owner, reading history (e.g. when was the object examined by a reader system in the past and possibly reader system identification) and additional data., [0078] the blockchain servers implement a blockchain data structure per each object that is managed/recorder therein to thereby record the data indicative of the transaction history and/or owner data and/or other parameters of the object (e.g. data indicative of the signature, such as spectral response and/or other elementally coded symbols physically implemented by the marking that is embedded/included in/on the object), [0093] the local computing device 400 (may be associated with a control unit of the reader 500))l the tag is associated with an identification ([0078] blockchain servers and/or in independent servers, carries/stores data indicative of the markings (e.g. XRF mark and/or other marks) that is implemented/embedded in/on the object itself and even more specifically, it stores/recodes data indicative of the way such marking should be read.[0079] A reader for reading XRF marking (i.e. XRF analyzer , [0080] a blockchain data structure recording the transaction history of the object, according to some embodiments of the present invention, each new transaction (e.g. each new block in the blockchain data structure of the object) should be authorized by reading the correct signature of the marking that is embedded/implemented in/on the object., [0085] The reader 500 and is configured to access the management database 200 via a corresponding computing device 400 to provide the management database 200 with data indicative of the alleged identity/type of the object which is to be read, and receive in response from the management database 200, data indicative of measurement/reading parameters (reading data) by which to read the object. ,[0091] the reader unit 500 may be configured to transmit a request for reading parameters, associated with a specific object (based on object id and owner id, to verify object identity)
Kislev discloses that identification has been registered on the distributed ledger ([0068] a data record (block-) chain associated with an object. The database entry includes several data pieces associated with the relevant object. Such data pieces include object indication, e.g. title, corresponding object description, data indicative of unique object marking, data about object ownership, and may also include data about mark reading parameters.)
Kislev does not specifically teach tagging or marking the precious stone with a tag at a sub-surface site irrespective of the presence of any defects or impurities at the sub-surface site within the precious stone using a laser-based tagging device; and wherein the sub-surface situs of the tag prevents modification of the tag; wherein the tag is read using an optical reading device. Kislev, however discloses [0075] An XRF marking may be also incorporated within an object (i.e. in the bulk material of the object) (sub surface). An advantage of XRF marking is that it can be applied to or incorporated in an object (sub-surface) without harming the object or affecting its physical, chemical, electrical and/or magnetic properties. a blockchain-type database providing secured and change resistant record. Accordingly, each data entry associated with a specific marked object may form a block or a record in a block, where updates of object data such as ownership or value data may be added as additional layer or linked blocks/records ([0026]); reading unit to perform reading of specific objects or markings ([0085])
Potemkin teaches tagging or marking the precious stone at a sub-surface irrespective of the presence of any defects or impurities at the sub-surface site within the precious stone using a laser-based tagging device ([0011] marking objects, above all precious stones, semi-precious stones and technical diamonds, consists in irradiating the object using laser beams in the U.V. range through a mask placed in the beam path between laser and object until a marking is formed on the surface of the stone, wherein the depth of the marking (sub-surface) depends on the duration and intensity of the irradiation [0023] surface of the diamond or brilliant using laser light having a wavelength of less than 400 nm and the surface is simultaneously exposed to the influence of ultrasound and laser light having a wavelength of more than 500 nm when the identification marking invisible to the naked eye is applied. [0035] marking by two lasers and an ultrasonic source, Fig 1 # 5 (precious stone), [0037] applying the identification marking invisible to the naked eye on the surface of the diamond or brilliant can be realized in a variant with a device, the schematic view of which is found in FIG. 1. The writing device consists of laser); and wherein the sub-surface situs of the tag/marking prevents modification of the tag ([0022] ensuring the uniqueness of the marking, their protection against forgery and safe identification during the testing of authenticity., [0030] The result is an identification mark protected against copying, reproduction and forgery since a spark discharge is created by the influence of the laser which produces the high electric field strength, said spark discharge effecting local destructions of material, the shape of which is determined by the electrical and mechanical conditions prevailing in the respective field.); wherein the tag is read using an reading device ([0018] The authenticity of the stone is checked by means of a jeweler's magnifier (reading device) by comparing the genuine stone with the image provided on the authenticity certificate or the image on the stone as such. The jeweler uses the magnifier for reading out the alphanumerical inscription on the precious stone, which is invisible to the naked eye. The alphanumerical inscription or a part thereof contains information for identifying the precious stone, such as a serial number, [0040] the optical measuring device 10 )
It would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to have included tagging or marking the precious stone with a tag at a surface site irrespective of the presence of any defects or impurities at the sub-surface site within the precious stone using a laser-based tagging device; and wherein the sub-surface situs of the tag prevents modification of the tag; wherein the tag is read using an reading device, as disclosed by Potemkin in the system disclosed by Kislev, for the motivation of providing a method of marking valuable articles, including precious stones and in particular cut diamonds (brilliants) and uncut diamonds to make subsequent identification possible ([0002] Potemkin).
Kislev/Potemkin do not specific teach a tag at a sub-surface site; wherein the tag is read using an optical reading device configured with a magnification of more than 10X
Hui teaches tagging or marking a tag at the sub-surface site within the precious stone using a laser-based tagging device (Col 10 lines 20-28 a gemstone facet surface 1010 having two identifiable marks 1011 and 1012 in accordance with the present invention, whereby the identifiable marks are provided on sapphire. The identifiable marks 1011 and 1012 have been provided to the gemstone facet surface 1010 as a lattice of a plurality of discrete nanometer sized recessed or protruded entities of a non-periodicity and irregular structure. The entities are arranged within a predefined region of said facet in a predetermined arrangement in relation to each other, Fig 10D # 1011, 1012 (sub surface marking) Col 13 lines 28-30The depth positions 1413, 1414, 1415 and 1416 where the ion beam is focused at, relative to the top surface 1401 of gemstone 1400 facet, claim 12); wherein the tag is read using an optical reading device (Col 3 lines 18-30providing the identifiable mark on a portion of a polished facet of a surface of an article being identifiable by an optical magnifying viewing device, said method including the steps of forming a nano-structure of a two-dimensional or a three-dimensional lattice of a plurality of discrete nanometer sized recessed or protruded entities on a portion of a facet of an article, Col 2 lines 32-40) configured with a magnification of more than 10X (Col 2 lines 52-53 The mark is viewable preferably by way of magnification greater than 10× magnification.)
It would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to have included a tag at a sub-surface site; wherein the tag is read using an optical reading device configured with a magnification of more than 10X, as disclosed by Hui in the system disclosed by Kislev/Potemkin, for the motivation of providing an information marking applied to solid state materials including gemstone, including Diamond, Ruby, Sapphire, Emerald, Pearl, Jade, Tourmaline and the like, and other such solid state materials such as silicon, which is invisible to the naked eye and is invisible when utilizing a typical camera equipped microscope under normal light conditions (Col 6 lines 30-40 Hui)
Kislev/Potemkin/Hui do not teach tagging or making with a femtosecond laser;
Barron teaches tagging or making with a femtosecond laser (Page 7 summary of invention: The component mark marks are preferably engraved at one depth below the surface of a large faceted and polished facet (facet) of the diamond, and this facet is preferably a diamond plate (also called a pad). As a result, you can mark gems inserted into any type of frame. Each individual label is entered using a protocol specifically aimed at forming a label of the required size by exposing the gemstone surface to the smallest number of femtosecond laser pulses) the precious stone with an etched tag at a sub-surface site (Page 5 Eshkom undoubtedly succeeded in tagging microstructures at a depth of about 40 µm below the surface of a diamond sample using laser pulses that transferred energy that varied from about 20 to 90 nJ (nanojoules).); optical reading device configured with a magnification of more than 10X (Page 12 An optical reader : The sign engraved in the volume of the gemstone 120 is displayed with adequate lateral magnification on the camera’s matrix sensor on the CCD 166, consisting essentially of a microscope lens 162 mounted on an extension tube 164. The microscope lens 162 is preferably a standard A serial lens designed for use with a 160 mm barrel. The exact length of the extension tube 164 is selected accordingly. It was found that enlarged images of signs having convenient overall dimensions fit well the size of CCD array sensors when selecting a microscope lens 162 that provide magnification in the range 10x- 20x.)
It would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to have included tagging or making with a femtosecond laser, as disclosed by Barron in the system disclosed by Kislev/Potemkin/Hui, for the motivation of providing laser marking precious stones such as diamonds, marks consist of several microscopic dots, increase of which can be initiated upon effect on natural internal defects or impurities inside the precious stone of a strictly focused laser pulse sequence (Abstract lines 1-5 Barron)
Regarding claims 2 and 14, Kislev as modified by Potemkin/Hui teaches the method/system of claims 1 and 13,
Kislev teaches incorporating the information on at least one of an Internet of Things or cloud-based storage ([0103] record the object in the database the reader may connect to a cloud-based management database that manages and assigns signatures).
Regarding claim 5, Kislev as modified by Potemkin/Hui teaches the method of claim 1.
Kislev teaches encrypting at least one of the identification or information ([0023] The different data pieces associated with the object may be publicly available or encrypted to be visible/readable using suitable cryptographic key associated with authorized readers (as described further below), object owner, and/or management key.[0051] actual marking data may be stored, encrypted or in plaintext, in one or more servers associated with management database used for verifying reading data provided by an authorized reader unit. ).
Regarding claims 6 and 16, Kislev as modified by Potemkin/Hui teaches all the limitations as described above.
Kislev teaches wherein the identification is a public key, machine-readable code, a non-fungible token, a fungible token, or human-readable code with magnification ([0073] the blockchain database stores, in its one or more corresponding servers, details of ownership and ownership history (e.g. including a public key identifying the owner), additional details relating to the object, the owner, reading history (e.g. when was the object examined by a reader system in the past and possibly reader system identification) and additional data. )
Regarding claims 7 and 17, Kislev as modified by Potemkin/Hui teaches all the limitations as described above.
Kislev teaches wherein the tagging or marking is performed on the surface of the precious stone ([0075] The XRF signatures may be applied or added to the surface of an object as a continuous film or coating in localized areas. An XRF marking may be also incorporated within an object (i.e. in the bulk material of the object).).
Regarding claim 8, Kislev as modified by Potemkin/Hui teaches all the limitations as described above.
Kislev teaches wherein the distributed ledger is a blockchain ([0080] a blockchain data structure recording the transaction history of the object, according to some embodiments of the present invention, each new transaction (e.g. each new block in the blockchain data structure of the object) should be authorized by reading the correct signature of the marking that is embedded/implemented in/on the object. ).
Regarding claims 9 and 18, Kislev as modified by Potemkin/Hui teaches all the limitations as described above.
Kislev teaches wherein the information, in addition to ownership, includes at least one of, name of a buyer or other identity information, means of payment information, bank transaction information, precious stone details, gemological lab certificate number, invoice of sale, payment verification information, physical location of the asset, or custodian of the asset ([0073] the blockchain database stores, in its one or more corresponding servers, details of ownership and ownership history (e.g. including a public key identifying the owner), additional details relating to the object, the owner (name of buyer), reading history (e.g. when was the object examined by a reader system in the past and possibly reader system identification) and additional data [0080] a blockchain data structure recording the transaction history of the object, according to some embodiments of the present invention, each new transaction (e.g. each new block in the blockchain data structure of the object) should be authorized by reading the correct signature of the marking that is embedded/implemented in/on the object. ).
Regarding claim 10, Kislev as modified by Potemkin/Hui teaches all the limitations as described above.
Kislev teaches requiring the provision of a minimum amount of information regarding the precious stone before assigning the precious stone an identification ([0025] The database thus includes data indicating object-signature corresponding to a secure physical marking of the object; an owner (identified via a code), [0029] an object data record provides a record data about the object, such as ownership data. Additionally, the corresponding data record is directly linked to the object in the meaning that the object code is associated with a unique marking of the physical object. ).
Regarding claim 12, Kislev as modified by Potemkin/Hui teaches the method of claim 1; comprising:
Kislev discloses verifying ownership information of the precious stone included on the distributed ledger to enable a trust-based transaction involving the precious stone on an online marketplace ([0028] upon reading an object, the reader unit may also be configured for transmitting data about the reading, e.g. including general description of the object, location and time of the reading without actual reading data, to the at least one server (computation node) associated with the blockchain, providing indication that an actual object was read and is associated with the requested record, [0080] a blockchain data structure recording the transaction history of the object, according to some embodiments of the present invention, each new transaction (e.g. each new block in the blockchain data structure of the object) should be authorized by reading the correct signature of the marking that is embedded/implemented in/on the object., [0085] provide a technique for verifying that the physical measurement/reading of the correct object is performed before any transaction of the object can be committed/recorder to the block chain servers, [0091] the reader unit 500 may be configured to transmit a request for reading parameters, associated with a specific object (based on object id and owner id, to verify object identity). The request may be processed by one or more server systems associated with the management database 200, and reading parameters may be sent only to authorized reader units.).
Regarding claim 19, Kislev as modified by Potemkin/Hui teaches the method of claim 13.
Kislev discloses farther comprising at least one reading device for reading at least one of the identification of the precious stone or the at least one medium ([0085] the reader 500 may be authorized, by the management database 200 to perform reading of specific objects or markings, and configured to not allow access to any data which may lead to exposing the markers (and their concentration) marking the object. [0091] the reader unit 500 may be configured to transmit a request for reading parameters, associated with a specific object (based on object id and owner id, to verify object identity). The request may be processed by one or more server systems associated with the management database 200, and reading parameters may be sent only to authorized reader units.).
Regarding claim 20, Kislev as modified by Potemkin/Hui teaches the method of claim 19,
Kislev teaches an online marketplace wherein ownership information included on the distributed ledger, verified by the at least one reading device, enables a trust-based transaction with the precious stone ([0025] The database thus includes data indicating object-signature corresponding to a secure physical marking of the object; an owner (identified via a code) and may also include data about a manner in which the object-signature is to be read (i.e. detected or measured) from the object, e.g. type of authorized reader and/or reading parameters. The database storage is configured to be an entry history maintaining configuration, (e.g. blockchain configuration) such that changes in data pieces provided after creation of each entry are stored in layered structure, or linked records, adding new and updated data while maintaining the previous data associated with updated fields of the corresponding data entry.).
Claims 3-4 and 15 are rejected under pre-AIA 35 U.S.C. 103(a) as being unpatentable over Kislev et al (US 2020/0184465) in view of Potemkin (US 2014/0312017 A1) further in view of Hui et al. (US 10,475,355B2) as applied to claims 1 and 13, further in view of Vikas et al. (US 2019/0108482).
Regarding claim 3, Kislev as modified by Potemkin/Hui teaches the method of claim 1,
Kislev does not explicitly teach providing the at least one medium to an owner of the precious stone.
Vikas discloses providing the at least one medium to an owner of the precious stone ([0059] a blockchain ledger entry for the respective permits or licenses or certificates can record date/time stamps, period of validity, or ownership detail, Figs. 7-8B; Pars. 77 At operation 404, a certificate of origin is obtained (e.g., from a CITES management authority), 97-124, 146-147).
It would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to have included providing the at least one medium to an owner of the precious stone, as disclosed by Vikas in the system disclosed by Kislev, for the motivation of providing a method to verify the authenticity of the object information represented in the blockchain by multiple global stakeholders (Vikas, Pars. 34-37, 60).
Regarding claims 4 and 15, Kislev in view of Potemkin/Hui and Vikas teaches the method of claim 3
Kiselev does not teach wherein the medium is a digital token, a recorded chip or on a portable data storage device
Vikas discloses wherein the medium is a digital token, a recorded chip or on a portable data storage device ([0144] a machine-readable medium 1022 on which is stored one or more sets of instructions and data structures (e.g., software), [0145]).
It would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to have included wherein the medium is a digital token, a recorded chip or on a portable data storage device, as disclosed by Vikas in the system disclosed by Kislev, for the motivation of providing a method to verify the authenticity of the object information represented in the blockchain by multiple global stakeholders (Vikas, Pars. 34-37, 60).
Claim 11 is rejected under pre-AIA 35 U.S.C. 103(a) as being unpatentable over Kislev et al (US 2020/0184465) in view of Potemkin (US 2014/0312017 A1) further in view of Hui et al. (US 10,475,355B2) as applied to claim 1, further in view of Tal. (US 2019/0073720).
Regarding claim 11, Kislev as modified by Potemkin/Hui teaches the method of claim 1,
Kislev does not explicitly teach rating an individual or entity responsible for at least one of tagging, registering, performing, or recording with respect to the precious stone, based on at least one of trustworthiness, accuracy and honesty.
Tal disclose rating an individual or entity responsible for at least one of tagging, registering, performing, or recording with respect to the precious stone, based on at least one of trustworthiness, accuracy and honesty ([0073] users may provide ratings, points, comments, review etc. for other users, to enable development of trust relationships, provision of a scale of reliability. When a user's rating directly impacts on a promotion activity, by prioritizing the stock promoted by the users with the leading ratings, displaying them in more strategic position.).
It would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to have included rating an individual or entity responsible for at least one of tagging, registering, performing, or recording with respect to the precious stone, based on at least one of trustworthiness, accuracy and honesty, as disclosed by Tal in the system disclosed by Kislev, for the motivation of providing a method to provide rating information that is based on precious stone rating for consumers (Tal, Pars. 68-73).
Response to Arguments
Applicant's arguments filed 11/13/25 have been fully considered but they are not persuasive.
Regarding 101 rejection, applicant states amended claims recite significantly more than abstract idea. Examiner has considered all arguments and respectfully disagrees. The step of tagging or making is performed using a laser-based tagging device. The laser device/optical reding device are recited at a high-level of generality such that it amounts to no more than mere instructions to apply the exception using a generic computer component. Simply implementing the abstract idea on generic components is not a practical application of the abstract idea. Accordingly, this additional element does not integrate the abstract idea into a practical application because it does not impose any meaningful limits on practicing the abstract idea.
Regarding 101 arguments, applicant states that an unmarked precious stone is transformed to a different state. Examiner has considered all arguments and respectfully disagrees. In order to meet the criteria of transformation, it has to be transformation of a physical object or substance, not a concept per these factors. "Transformation" of an article means that the "article" has changed to a different state or thing. Changing to a different state or thing usually means more than simply using an article or changing the location of an article. A new or different function or use can be evidence that an article has been transformed. Purely mental processes in which thoughts or human based actions are "changed" are not considered an eligible transformation. For data, mere "manipulation of basic mathematical constructs [i.e.,] the paradigmatic ‘abstract idea,' " has not been deemed a transformation. CyberSource v. Retail Decisions, 654 F.3d 1366, 1372 n.2, 99 USPQ2d 1690, 1695 n.2 (Fed. Cir. 2011) (quoting In re Warmerdam, 33 F.3d 1354, 1355, 1360 (Fed. Cir. 1994)). Tilghman v. Proctor, 102 U.S. 707 (1881), provides an example of effecting a transformation of a particular article to a different state or thing. In that case, the claim was directed to a process of subjecting a mixture of fat and water to a high degree of heat and included additional parameters relating to the level of heat, the quantities of fat and water, and the strength of the mixing vessel. The claimed process, which used the natural principle that the elements of neutral fat require that they be severally united with an atomic equivalent of water in order to separate and become free, resulted in the transformation of the fatty bodies into fat acids and glycerine. Id. at 729. Merely marking/tagging information on precious stone surface, is not a transformation. See MPEP 2106 for further analysis and explanation.
On page 6-7, applicant states amended claims provide improvement through the use of distributed ledger technology. Examiner has considered all arguments and respectfully disagrees. The claims only recites the additional element – as a femtosecond laser, a laser-based tagging device, distributed ledger, medium for recording information, optical reading device. The additional elements, are recited at a high-level of generality such that it amounts to no more than mere instructions to apply the exception using a generic computer component. Simply implementing the abstract idea on generic components is not a practical application of the abstract idea. Accordingly, this additional element does not integrate the abstract idea into a practical application because it does not impose any meaningful limits on practicing the abstract idea. When considered in combination, the claims do not amount to improvements to the function of a computer, or to any other technology or technical field, as discussed in MPEP 2106.05(a), applying the judicial exception with, or by use of, a particular machine, as discussed in MPEP 2106.05(b), effecting a transformation or reduction of a particular article to a different state or thing, as discussed in MPEP 2106.05(c), or applying or using the judicial exception in some other meaningful way beyond generally linking the use of the judicial exception to a particular technological environment
Applicant’s arguments with respect to claims 103 have been considered but are moot because 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. New limitations have been considered in claim rejection above. Kislev, however discloses [0075] An XRF marking may be also incorporated within an object (i.e. in the bulk material of the object) (sub surface). An advantage of XRF marking is that it can be applied to or incorporated in an object (sub-surface) without harming the object or affecting its physical, chemical, electrical and/or magnetic properties. Potemkin teaches tagging or marking the precious stone at a sub-surface ([0011] marking objects, above all precious stones, semi-precious stones and technical diamonds, consists in irradiating the object using laser beams in the U.V. range through a mask placed in the beam path between laser and object until a marking is formed on the surface of the stone, wherein the depth of the marking (sub-surface) depends on the duration and intensity of the irradiation. Also, Hui teaches tagging or marking a tag at the sub-surface site within the precious stone using a laser-based tagging device (Col 10 lines 20-28 a gemstone facet surface 1010 having two identifiable marks 1011 and 1012 in accordance with the present invention, whereby the identifiable marks are provided on sapphire. The identifiable marks 1011 and 1012 have been provided to the gemstone facet surface 1010 as a lattice of a plurality of discrete nanometer sized recessed or protruded entities of a non-periodicity and irregular structure. The entities are arranged within a predefined region of said facet in a predetermined arrangement in relation to each other, Fig 10D # 1011, 1012 (sub surface marking), claim 12, Col 13 lines 28-30The depth positions 1413, 1414, 1415 and 1416 where the ion beam is focused at, relative to the top surface 1401 of gemstone 1400 facet. New limitations have been addressed in claim rejection above.
Conclusion
The prior art made of record and not relied upon is considered pertinent to applicant's disclosure:
Barron et al. (US 2006/0196858); Barron discloses wherein the tagging or marking is performed at a sub-surface site within the precious stone (Figs. 6-7; Pars. 66-72).
Potemkin (US 2014/0312017); discloses wherein the tagging or marking is performed on the surface of the precious stone (Abstract, Figs. 1-2; Pars. 37-39).
RU2357870C1 discloses laser marking precious stone.
Koh (US 10,733,615) discloses certification and verification of gemstones
Hui (US20210319722) teaches tagging or marking a tag at the sub-surface site within the precious stone using a laser-based tagging device ([0047] Laser radiation 2 (FIG. 2) causes the formation of atomic defects in the area of micron or submicron size 7. The area 7 is a single element of the mark. After the mark element has been formed in a given area inside the diamond, the subsystem for moving the diamond moves the diamond in space in accordance with the digital model of the image to be recorded in the crystal volume entered by user, Fig 3 # 14 marking within diamond and [0049] optically permeable marks comprises a laser 8 generating exciting optical radiation 9, which is reflected from a translucent mirror 10 and is focused by a focusing subsystem 11 inside a diamond 12, mounted on a subsystem for moving 13, which provides moving it in space along three spatial coordinates, and additionally two angular coordinates, to the area of the expected location of the mark 14 ); wherein the tag is read using an optical reading device ([0014] Recognition (detection) of the production mark or identification mark can be carried out, for example, visually or using special optical devices the marks are invisible to the naked eye, using magnifying glasses and various types of microscopes. Abstract In particular, the marks are invisible to the naked eye, using magnifying glasses and v