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 .
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and the fee set forth in 37 CFR 1.17(e) has been timely paid, the finality of the previous Office action has been withdrawn pursuant to 37 CFR 1.114.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 01/06/2026 has been entered.
Status of the Application
This is a Non-Final Action in response to the claims submitted on 01/06/2026.
Claims 1, 9, and 17 are amended.
Claims 21-23 are new.
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 1-23 are rejected under 35 U.S.C. 101 because the claims are directed to an abstract idea without significantly more.
Claims 1-23 are rejected under 35 U.S.C. 101 because the claimed invention is directed to an abstract idea without significantly more. The eligibility analysis in support of these findings is provided below, in accordance with MPEP 2106.
With respect to Step 1 of the eligibility inquiry (as explained in MPEP 2106), it is first noted that the method (claims 1-8), system (claims 9-16 and 17-20) are directed to at least one potentially eligible category of subject matter (i.e., process and machine, respectively). Thus, Step 1 of the Subject Matter Eligibility test for claims 1-23 is satisfied.
With respect to Step 2A Prong One, it is next noted that the claims recite an abstract idea that falls under the “Mental Processes” and the “Certain Methods of Organizing Human Activity” groups within the enumerated groupings of abstract ideas set forth in the MPEP 2106.04 since the claims set forth steps that can be performed in the human mind (e.g., observation, evaluation, judgment, opinion) and sales activities or behaviors; business relations . With respect to independent claims 1, 9 and 17, the limitations reciting the abstract idea are indicated in bold below:
receiving a first indication of an asset of a manufacturer being at a first point in a supply chain and a code associated with the asset;
generating a password linked to a database of the manufacturer;
associating the data element to the code of the asset;
locking (i.e. hiding) the password until the asset reaches a second point in the supply chain after the asset has left the manufacturer, wherein locking (i.e. hiding) the password prevents the password from being claimed and wherein the password remains locked (i.e. hidden) until a second indication that the asset has reached the second point in the supply chain is received;
receiving the second indication indicating the asset of the manufacturer has reached the second point in the supply chain;
unlocking (i.e. revealing) the password to authenticate the asset in response to receiving the second indication, wherein unlocking (i.e. revealing) the password allows the password to be claimed, and
Because the above-noted limitations recite steps falling within the Mental Processes, and Certain Methods of Organizing Human Activity abstract idea groupings of the MPEP 2106.04, they have been determined to recite at least one abstract idea when evaluated under Step 2A Prong One of the eligibility inquiry.
Therefore, because the limitations above set forth activities falling within the “Mental Processes, and Certain Methods of Organizing Human Activity abstract idea groupings described in the MPEP 2106.04, the additional elements recited in the claims are further evaluated, individually and in combination, under Step 2A Prong Two and Step 2B below. Claims 9 and 16 recites similar limitations as claim 2 and are therefore determined to recite the same abstract idea.
With respect to Step 2A Prong Two of the MPEP 2106, the judicial exception is not integrated into a practical application. The additional elements are:
generating a token linked to a blockchain of the manufacturer, wherein the token includes a digital signature created using a creation key of the manufacturer;
locking and unlocking the token;
wherein the locking and unlocking are performed by a blockchain component;
a memory having instructions; and
one or more processors communicatively coupled to the memory; and
a non-transitory computer readable medium.
These additional elements have been evaluated, but fail to integrate the abstract idea into a practical application because they amount to using generic computing elements, generic recitations or generic computer-executable instructions (software) to perform the abstract idea, similar to adding the words “apply it” (or an equivalent), and merely serve to link the use of the judicial exception to a particular technological environment. See MPEP 2106.05(f) and 2106.05(h).
Regarding “generating a token linked to a blockchain”, “locking and unlocking the token;
wherein the locking” and “unlocking are performed by a blockchain component” The examiner views these additional elements as results-oriented steps given that there is no restriction on how the result is accomplished and no description of the mechanism for accomplishing the result are currently present such that this is viewed as equivalent to “apply it” for merely implementing the abstract idea using generic computing components (See Id.).
In addition, these limitations fail to provide an improvement to the functioning of a computer or to any other technology or technical field, fail to apply the exception with a particular machine, fail to apply the judicial exception to effect a particular treatment or prophylaxis for a disease or medical condition, fail to effect a transformation of a particular article to a different state or thing, and fail to apply/use the abstract idea in a meaningful way beyond generally linking the use of the judicial exception to a particular technological environment.
Accordingly, because the Step 2A Prong One and Prong Two analysis resulted in the conclusion that the claims are directed to an abstract idea, additional analysis under Step 2B of the eligibility inquiry must be conducted in order to determine whether any claim element or combination of elements amount to significantly more than the judicial exception.
With respect to Step 2B of the eligibility inquiry, it has been determined that the claims do not include additional elements that are sufficient to amount to significantly more than the judicial exception.
As noted above, the claims as a whole merely describes a method, computer system, and computer program product that generally “apply” the concepts discussed in prong 1 above. (See MPEP 2106.05 f (II)) In particular applicant has recited the computing components at a high-level of generality such that it amounts to no more than mere instructions to apply the exception using generic computer components. As the court stated in TLI Communications v. LLC v. AV Automotive LLC, 823 F.3d 607, 613 (Fed. Cir. 2016) merely invoking generic computing components or machinery that perform their functions in their ordinary capacity to facilitate the abstract idea are mere instructions to implement the abstract idea within a computing environment and does not add significantly more to the abstract idea. Accordingly, these additional computer components do not integrate the abstract idea into a practical application because it does not impose any meaningful limits on practicing the abstract idea. Therefore, even when viewed as a whole, nothing in the claim adds significantly more (i.e. an inventive concept) to the abstract idea and as a result the claim is not patent eligible.
In addition, when taken as an ordered combination, the ordered combination adds nothing that is not already present as when the elements are taken individually. There is no indication that the combination of elements integrates the abstract idea into a practical application. Their collective functions merely provide generic computer implementation. Therefore, when viewed as a whole, these additional claim elements do not provide meaningful limitations to transform the abstract idea into a practical application of the abstract idea or that, as an ordered combination, amount to significantly more than the abstract idea itself.
Dependent claims 2-8, 10-16 and 17-23 recite the same abstract idea as recited in the independent claims, and when evaluated under Step 2A Prong One are found to merely recite details that serve to narrow the same abstract idea recited in the independent claims accompanied by the same generic computing elements or software as those addressed above in the discussion of the independent claims, which is not sufficient to amount to a practical application or add significantly more, or other additional elements that fail to amount to a practical application or add significantly more, as noted above.
Dependent claims 2, 10 and 18 further limits the abstract idea by embellishing the abstract idea and linking the judicial exception to a particular technological environment by introducing the limitation receiving, after unlocking the token, a registration request from a consumer for registering the asset based on the code; determining that the code is associated with the token and the asset has not been registered; and registering the asset to the consumer. Further embellishing that the invention is capable of processing information in a generic computing environment does not integrate the abstract idea into a practical application or adds significantly more to the abstract idea. Therefore the claims are also non-statutory subject matter.
Dependent claims 3, 11 and 19 further limits the abstract idea by embellishing the abstract idea and linking the judicial exception to a particular field of use by introducing the limitation wherein the registration request includes at least one of login information, a government issued identification number, an e-mail address, or a telephone number of the consumer. Further embellishing the invention by describing the type of data received does not integrate the abstract idea into a practical application or adds significantly more to the abstract idea. Therefore the claims are also non-statutory subject matter.
Dependent claims 4 , 12 and 20 further limits the abstract idea by embellishing the abstract idea and linking the judicial exception to a particular technological environment by introducing the limitation wherein generating the token comprises generating the digital signature using a token identifier of the token and the creation key. Therefore the claims are also non-statutory subject matter.
Dependent claims 5 and 13 further limits the abstract idea by embellishing the abstract idea and linking the judicial exception to a particular technological environment by introducing the limitation wherein generating the digital signature comprises applying a hash function to at least a portion of the token identifier and at least a portion of the creation key. Therefore the claims are also non-statutory subject matter.
Dependent claims 6 and 14 further limits the abstract idea by embellishing the abstract idea and linking the judicial exception to a particular technological environment by introducing the limitation receiving, before unlocking the token, a registration request from a consumer for the asset based on the code; and determining that the registration request is invalid. Further embellishing that the invention is capable of processing information in a generic computing environment does not integrate the abstract idea into a practical application or adds significantly more to the abstract idea. Therefore the claims are also non-statutory subject matter.
Dependent claims 7 and 15 further limits the abstract idea by embellishing the abstract idea and linking the judicial exception to a particular technological environment by introducing the limitation receiving a registration request from a consumer for a second asset based on a second code; determining that the second code is not associated with any token of the blockchain; and determining that the second asset is a counterfeit asset. Further embellishing that the invention is capable of processing information in a generic computing environment does not integrate the abstract idea into a practical application or adds significantly more to the abstract idea. Therefore the claims are also non-statutory subject matter.
Dependent claims 8 and 16 further limits the abstract idea by embellishing the abstract idea and linking the judicial exception to a particular technological environment by introducing the limitation receiving a registration request from a consumer for a third asset based on the code; determining that the code is associated with the token and the third asset has been registered; and determining that the third asset is a counterfeit asset. Further embellishing that the invention is capable of processing information in a generic computing environment does not integrate the abstract idea into a practical application or adds significantly more to the abstract idea. Therefore the claims are also non-statutory subject matter.
Dependent claim 21 further limits the abstract idea by embellishing the abstract idea and linking the judicial exception to a particular technological environment by introducing the limitation preventing registration of the asset unless the token is unlocked. Preventing registration of an asset until data is known is a process that can be performed manually until limited by the use of a token in a blockchain environment. Furthermore the examiner views these additional elements as results-oriented steps given that there is no restriction on how the result is accomplished and no description of the mechanism for accomplishing the result are currently present such that this is viewed as equivalent to “apply it” for merely implementing the abstract idea using generic computing components (See Id.). Therefore the claim is also non-statutory subject matter.
Dependent claims 22-23 further limits the abstract idea by embellishing the abstract idea and linking the judicial exception to a particular technological environment by introducing the limitation wherein the second point in the supply chain is reached at a predetermined time after the asset leaves the first point in the supply chain; and wherein the second point in the supply chain is reached when the asset is a predetermined distance from the first point in the supply chain. Further embellishing the invention with abstract processes and descriptions does not adds significantly more to the abstract idea. Therefore the claims are also non-statutory subject matter.
The ordered combination of elements in the dependent claims (including the limitations inherited from the parent claim(s)) add nothing that is not already present as when the elements are taken individually. There is no indication that the combination of elements improves the functioning of a computer or improves any other technology, and the collective functions merely provide conventional computer implementation. Therefore, whether taken individually or as an order combination, the claims are nonetheless rejected under 35 U.S.C. 101 as being directed to non-statutory subject matter.
For more information, see MPEP 2106.
Response to Arguments
Applicant's arguments filed 01/06/2026 have been fully considered but they are not persuasive.
Regarding the previously presented 35 USC 101 rejection, Applicant argues that the newly added limitations provide an integration into a practical application. Examiner respectfully disagrees. Limitations that are indicative of integration into a practical application include: Improvements to the functioning of a computer, or to any other technology or technical field - see MPEP 2106.05(a); Applying or using a judicial exception to effect a particular treatment or prophylaxis for a disease or medical condition – see Vanda Memo; Applying the judicial exception with, or by use of, a particular machine - see MPEP 2106.05(b); Effecting a transformation or reduction of a particular article to a different state or thing - see MPEP 2106.05(c); and 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 - see MPEP 2106.05(e) and Vanda Memo. In the instant case, there is no improvement to the functioning of a computer or any other technology, there is no using a judicial exception to effect a particular treatment or prophylaxis for a disease or medical condition, there is no application of the judicial exception with, or by use of, a particular machine, there is no effecting a transformation or reduction of a particular article to a different state or thing and 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. In the instant case, the applicant is merely using the technology as a tool to perform the abstract idea in a specific environment by requiring the use of a token. The examiner views these additional elements as results-oriented steps given that there is no restriction on how the result is accomplished and no description of the mechanism for accomplishing the result are currently present such that this is viewed as equivalent to “apply it” for merely implementing the abstract idea using generic computing components (See Id.).
Conclusion
The prior art made of record and not relied upon is considered pertinent to applicant's disclosure.
CHUA (US 20230169154) OWNERSHIP DATA MANAGEMENT SYSTEM AND METHOD This invention relates to an ownership data management system and method. More particularly, this invention relates to an ownership data management system and method for use when trading in collectible items/products.
MULAS (US 20230031817) SYSTEM AND METHOD FOR AUTHENTICATING AND CERTIFYING A PHYSICAL ITEM, AND CORRESPONDING CERTIFIED PHYSICAL ITEM This invention relates to the authentication and certification of goods, such as prestige goods or collectible goods, and specifically a system for authenticating and certifying a physical item according to the preamble of claim 1 and a corresponding method.
Manicka, (US 20210097554), MULTI-DIMENSIONAL APPROACH TO ANTI-COUNTERFEITING ACROSS DIFFERENT INDUSTRIES [0018] Apparatus and associated methods relate to using combinations of Internet of Things (IoT) technologies, block-chain secured data, time fencing, and location fencing to provide various services related to consumer and/or industrial products. Such services can include, for example, supply-chain management.
Andon, (US 10505726) System And Method For Providing Cryptographically Secured Digital Assets (20) In a representative example, an authenticated pair of physical shoes are created and assigned a Unique Product Identifier (UPID). Upon purchase by a consumer, the UPID is used to unlock a cryptographic digital asset—a “CryptoKick”—composed of a collectible digital shoe and a unique non-fungible token (NFT) operating on a blockchain-based distributed computing platform. (21) In general, before a consumer can unlock or acquire a CryptoKick, they may first be required to procure a blockchain locker address (e.g., an Ethereum hardware wallet). This blockchain locker may be used to store the private key belonging to the CryptoKick's NFT and, optionally, may be linked to a personal user account that is registered with the original manufacturer of the physical shoes (e.g., a NIKEPLUS® account profile).
Any inquiry concerning this communication or earlier communications from the examiner should be directed to MARIA C SANTOS-DIAZ whose telephone number is (571)272-6532. The examiner can normally be reached Monday-Friday 8:00AM-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, Sarah Monfeldt can be reached at 571-270-1833. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/MARIA C SANTOS-DIAZ/Primary Examiner, Art Unit 3629