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
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and the fee set forth in 37 CFR 1.17(e) has been timely paid, the finality of the previous Office action has been withdrawn pursuant to 37 CFR 1.114.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 6/12/2026 has been entered.
Response to Arguments
In communications filed on 6/12/2026, claims 1-20 are presented for examination. Claims 1, 7, 9, 13, and 14 are independent.
New claims: 18-20
Applicants’ arguments, see Applicant Arguments/Remarks filed 6/12/2026, with respect to claim(s) rejected under prior art have been fully considered and are unpersuasive. Matt et al combination teaches the claimed invention. Contrary to Applicant’s assertion cited art of record teaches a client wallet comprises a certificate that provides access to the permissioned blockchain network (see, Matt: ¶34, ¶55, i.e., license is stored on a blockchain. See also, Brenner: Figs. 3-6, ¶51-¶52, i.e., the token i.e., certificate, associated with PKI in a user wallet that provides access to a blockchain)
Applicant argues the references individually. In response to applicant's arguments against the references individually, one cannot show nonobviousness by attacking references individually where the rejections are based on combinations of references. See In re Keller, 642 F.2d 413, 208 USPQ 871 (CCPA 1981); In re Merck & Co., 800 F.2d 1091, 231 USPQ 375 (Fed. Cir. 1986). Koerber (US 20140180464 A1) teaches a selectively enabling features of a power tool via licenses granted by a license management system (Koerber: Figs. 1-2, ¶3-¶4, ¶22-¶25). Matt et al combination further teaches: wherein the licenses are stored in a permissioned blockchain network and encrypted with an associated public key and are accessible by the electric power tool using the private key and depend on license transactions successfully validated in the permissioned blockchain network (Matt: ¶34, ¶55, i.e., license is stored on a blockchain. Koerber: Figs. 1-2, ¶3-¶4, ¶22-¶25), wherein the client wallet comprises a certificate that provides access to the permissioned blockchain network for a client of the electric power tool. (Matt: ¶34, ¶55, i.e., license is stored on a blockchain. See also, Brenner: Figs. 3-6, ¶51-¶52, i.e., the token i.e., certificate, associated with PKI in a user wallet that provides access to a blockchain)
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.
Claim(s) 1, 3-7, 19 is/are rejected under 35 U.S.C. 103 as being unpatentable over US 20180257306 A1 (hereinafter ‘Matt’) in view of US 20140180464 A1 (hereinafter ‘Koerber’) in view of US 20190318348 A1 (hereinafter ‘Brenner’).
As regards claim 1, Matt (US 20180257306 A1) discloses: An electric power tool being operable according to at least one of multiple features associated with functions that the electric power tool is operable to execute depending on licenses being accessible to the electric power tool using a private key adapted for providing access to licenses (Matt: ¶17, ¶33-¶34, ¶55, ¶70, i.e., the 3D printer that prints based on licenses wherein the access to the license is provided via private key),
However, Matt does not but in analogous art, Koerber (US 20140180464 A1) teaches: the electric power tool being configured to perform according to each of the multiple features based on having an authorized license to perform such features, and wherein the at least one feature that the electric power tool can use, relating to hardware and/or software functions. (Koerber: Figs. 1-2, ¶3-¶4, ¶22-¶25, i.e., a selectively enabling features of a power tool via licenses granted by a license management system)
Before the effective filing date of the claimed invention, it would have been obvious to one of ordinary skill in the art to modify Matt to include license based selective enabling of a tool’s features as taught by Koerber with the motivation to selectively enable features of the tool (Koerber: Figs. 1-2, ¶3-¶4, ¶22-¶25)
However, Matt in combination with Brenner (US 20190318348 A1) in analogous art teaches: the private key being stored in a client wallet associated with the electric power tool (Brenner: Fig. 5, ¶51, i.e., the private key stored in the wallet)
Before the effective filing date of the claimed invention, it would have been obvious to one of ordinary skill in the art to modify Matt to include a digital wallet for storing a private key in a blockchain system as taught by Brenner with the motivation to securely manage licenses (Brenner: Fig. 5, ¶51-¶52)
Matt et al combination further teaches: wherein the licenses are stored in a permissioned blockchain network and encrypted with an associated public key and are accessible by the electric power tool using the private key and depend on license transactions successfully validated in the permissioned blockchain network (Matt: ¶34, ¶55. Koerber: Figs. 1-2, ¶3-¶4, ¶22-¶25), wherein the client wallet comprises a certificate that provides access to the permissioned blockchain network for a client of the electric power tool. (Matt: ¶34, ¶55, i.e., license is stored on a blockchain. See also, Brenner: Figs. 3-6, ¶51-¶52, i.e., the token i.e., certificate, associated with PKI in a user wallet that provides access to a blockchain)
Claim 7 recites substantially the same features recited in claim 1 above, and is therefore rejected based on the aforementioned rationale discussed in the rejection.
As regards claim 3, Matt et al combination teaches the electric power tool according to claim 1, comprising an associated client configured to communicate with the blockchain network. (Matt: Figs. 1-2, ¶19-¶22, ¶51)
As regards claim 4, Matt et al combination teaches the electric power tool according to claim 1, comprising an electronic storage device configured to store the client wallet. (Brenner: Fig. 5, 12-13, ¶88)
As regards claim 5, Matt et al combination teaches the electric power tool according to claim 1, controllable by a controller according to the licenses being accessible to the electric power tool. (Matt: ¶16, ¶33-¶34)
As regards claim 6, Matt et al combination teaches the electric power tool according to claim 5, comprising the controller. (Matt: Figs. 1-3, ¶23)
As regards claim 19, Matt et al combination teaches the electric power tool according to claim 1, wherein the certificate comprises affiliation and permissions of a client associated with the electric power tool, and wherein the permissioned blockchain network only allows certified members to participate in license transactions. (Matt: ¶34, ¶55, i.e., license is stored on a blockchain. See also, Brenner: Figs. 3-6, ¶51-¶52, i.e., the token i.e., certificate, associated with PKI in a user wallet that provides access to a blockchain)
Claim(s) 2, 8-10, 12 is/are rejected under 35 U.S.C. 103 as being unpatentable over Matt in view of Koerber in view of Brenner in view of US 20190238317 A1 (hereinafter ‘Naz’).
As regards claim 2, Matt et al combination in further combination with Naz (US 20190238317 A1) teaches the electric power tool according to claim 1, wherein the private key is configured to decrypt license content in licenses successfully validated in the blockchain network and accessible to the electric power tool. (Naz: Fig. 8, ¶43, i.e., decrypting license in a blockchain. Matt: ¶33-¶34, ¶55, ¶64-¶66, ¶70)
Before the effective filing date of the claimed invention, it would have been obvious to one of ordinary skill in the art to modify Matt to include encrypting/decrypting license associated with content in a blockchain system as taught by Naz with the motivation to securely provide access to content (Naz: Fig. 8, ¶5, ¶43)
Claim 8 recites substantially the same features recited in claim 2 above, and is therefore rejected based on the aforementioned rationale discussed in the rejection.
As regards claim 9, Matt discloses: A client associated with a client wallet having stored a private key configured to provide access to license content for an electric power tool operable according to at least one of multiple features associated with functions that the electric power tool is operable to execute according to license content accessible to the electric power tool, the client comprising a non-transitory computer readable medium having stored thereon computer program means for providing access to licenses using the private key, wherein the licenses are stored in a permissioned blockchain network and encrypted with an associated public key and are accessible by the electric power tool using the private key, wherein the non-transitory computer readable medium client comprises: (Matt: ¶17-¶18, ¶33-¶34, ¶55, ¶70, i.e., the 3D printer that prints based on licenses wherein the access to the license is provided via private key),
However, Matt does not but in analogous art, Koerber (US 20140180464 A1) teaches: the electric power tool being configured to operate according to each of the multiple features based on having an authorized license to perform such features, and wherein the at least one feature that the device can use, relating to hardware and/or software functions (Koerber: Figs. 1-2, ¶3-¶4, ¶22-¶25, i.e., a selectively enabling features of a power tool via licenses granted by a license management system)
Before the effective filing date of the claimed invention, it would have been obvious to one of ordinary skill in the art to modify Matt to include license based selective enabling of a tool’s features as taught by Koerber with the motivation to selectively enable features of the tool (Koerber: Figs. 1-2, ¶3-¶4, ¶22-¶25)
However, Matt in combination with Brenner (US 20190318348 A1) in analogous art teaches: the private key being stored in a client wallet associated with the device (Brenner: Fig. 5, ¶51, i.e., the private key stored in the wallet)
Before the effective filing date of the claimed invention, it would have been obvious to one of ordinary skill in the art to modify Matt to include a digital wallet for storing a private key in a blockchain system as taught by Brenner with the motivation to securely manage licenses (Brenner: Fig. 5, ¶51-¶52)
Matt in combination with Naz further teaches: code for obtaining decrypted license content, the license content being decrypted using the private key of the client to thereby unlock features in the license content, the license content being received from a license transaction successfully validated in a permissioned blockchain network. (Naz: Fig. 8, ¶43, i.e., decrypting license in a blockchain. Matt: Fig. 4, ¶33-¶34, ¶55, ¶64-¶66, ¶70)
Before the effective filing date of the claimed invention, it would have been obvious to one of ordinary skill in the art to modify Matt to include encrypting/decrypting license associated with content in a blockchain system as taught by Naz with the motivation to securely provide access to content (Naz: Fig. 8, ¶5, ¶43)
via use of a certificate stored in the client wallet (Matt: ¶34, ¶55. See also, Brenner: Figs. 3-6, ¶51-¶52)
As regards claim 10, Matt et al combination teaches the client according to claim 9, the client being a first client wherein the non-transitory computer readable medium of the first client comprising: code for obtaining encrypted license content, the license content being encrypted using a public key of a second client; and (Naz: Fig. 5-8, ¶4-¶5, ¶30-¶43)
code for providing a license transfer request to the blockchain network, the license transfer request including license ownership data comprising at least identification data of the second client in the form of the public key of the second client, and the encrypted license content, if the license transfer is successfully validated in the blockchain network, (Naz: Fig. 5-8, ¶4-¶5, ¶30-¶43)
However, Matt in combination with Brenner (US 20190318348 A1) in analogous art teaches: the license content is accessible to the second client via a private key in the second client's wallet. (Matt: ¶34, ¶55. See also, Brenner: Figs. 3-6, ¶51-¶52, i.e., the private key stored in the wallet)
Before the effective filing date of the claimed invention, it would have been obvious to one of ordinary skill in the art to modify Matt to include a digital wallet for storing a private key in a blockchain system as taught by Brenner with the motivation to securely manage licenses (Brenner: Fig. 5, ¶51-¶52)
As regards claim 12, Matt et al combination teaches the client according to claim 9, wherein the private key is stored in a hardware security module of the electric power tool associated with the respective client or in a cloud-based storage and is accessible to the respective client. (Matt: ¶17-¶18, ¶33-¶34, ¶55, ¶70. Brenner: Fig. 5, ¶51, i.e., the private key stored in the wallet)
Before the effective filing date of the claimed invention, it would have been obvious to one of ordinary skill in the art to modify Matt to include a digital wallet for storing a private key in a blockchain system as taught by Brenner with the motivation to securely manage licenses (Brenner: Fig. 5, ¶51-¶52)
Claim(s) 13-14 is/are rejected under 35 U.S.C. 103 as being unpatentable over Matt in view of Naz in view of Brenner in view of Koerber.
As regards claim 13, Matt in combination with Naz teaches: A method for a license transfer from a first client to a second client, the method comprising: decrypting license content using a private key of the first client, client, wherein the licenses are stored in a permissioned blockchain network and encrypted with a public key associated with the first client and are accessible using the private key of the first client; (Matt: ¶17-¶18, ¶33-¶34, ¶55, ¶70, i.e., the 3D printer that prints based on licenses wherein the access to the license is provided via private key. See also, Naz: Naz: Fig. 8, ¶43, i.e., decrypting license in a blockchain)
Before the effective filing date of the claimed invention, it would have been obvious to one of ordinary skill in the art to modify Matt to include encrypting/decrypting license associated with content in a blockchain system as taught by Naz with the motivation to securely provide access to content (Naz: Fig. 8, ¶5, ¶43)
encrypting the license content using the public key of the second client; and (Naz: Fig. 5-8, ¶4-¶5, ¶30-¶43)
providing a license request to a permissioned blockchain network, the license request including license ownership data comprising at least identification data of the second client in the form of the public key of the second client, and the encrypted license content, (Naz: Fig. 5-8, ¶4-¶5, ¶30-¶43)
wherein, if the license transfer is successfully validated in the blockchain network, the license content becomes accessible to the second client using a private key associated with the second client and a certificate stored in the second client's wallet whereby the second client is configured to provide access to the license content for an electric power tool operable according to at least one of multiple features associated with functions that the electric power tool is operable to execute according to the license content. (Matt: ¶17-¶18, ¶33-¶34, ¶55, ¶70, i.e., the 3D printer that prints based on licenses wherein the access to the license is provided via private key. See also, Naz: Fig. 8, ¶43)
However, Matt in combination with Brenner (US 20190318348 A1) in analogous art teaches: wallet (Brenner: Fig. 3-6, ¶51-¶52, i.e., the private key stored in the wallet)
Before the effective filing date of the claimed invention, it would have been obvious to one of ordinary skill in the art to modify Matt to include a digital wallet for storing a private key in a blockchain system as taught by Brenner with the motivation to securely manage licenses (Brenner: Fig. 5, ¶51-¶52)
However, Matt does not but in analogous art, Koerber (US 20140180464 A1) teaches: the device being configured to operate according to each of the multiple features based on having an authorized license to operate such features, and wherein the at least one feature that an electric power tool can use, relating to hardware and/or software functions (Koerber: Figs. 1-2, ¶3-¶4, ¶22-¶25, i.e., a selectively enabling features of a power tool via licenses granted by a license management system)
Before the effective filing date of the claimed invention, it would have been obvious to one of ordinary skill in the art to modify Matt to include license based selective enabling of a tool’s features as taught by Koerber with the motivation to selectively enable features of the tool (Koerber: Figs. 1-2, ¶3-¶4, ¶22-¶25)
Claim 14 recites substantially the same features recited in claim 13 above and is therefore rejected based on the aforementioned rationale discussed in the rejection.
Claim(s) 11 is/are rejected under 35 U.S.C. 103 as being unpatentable over Matt in view of Koerber in view of Brenner in view of Naz in view of US 20190058910 A1 (hereinafter ‘Solow’).
As regards claim 11, Matt et al combination teaches the client according to claim 9. However, Matt et al do not but in analogous art, Solow (US 20190058910 A1) teaches: the permissioned blockchain network comprising peers associated with the license provider and peers associated with the license receiver organization holding the clients. (Solow: Figs. 1, 4, ¶11-¶14, i.e., provider distributing content and license in a blockchain network)
Before the effective filing date of the claimed invention, it would have been obvious to one of ordinary skill in the art to modify Matt to include blockchain based provider content/license distribution system to provide contents to recipient as taught by Solow with the motivation to securely provide content based on transaction verification (Solow: Figs. 1, 4, ¶8-¶9, ¶11-¶14)
Claim(s) 15, 16 is/are rejected under 35 U.S.C. 103 as being unpatentable over Matt in view of Koerber in view of Brenner in view of US 20190058910 A1 (hereinafter ‘Solow’).
As regards claim 15, Matt et al combination teaches the electric power tool according to claim 1. However, Matt et al do not but in analogous art, Solow (US 20190058910 A1) teaches: wherein the permissioned blockchain network comprises peers associated with a license provider and peers associated with a license receiver organization associated with the client. (Solow: Figs. 1, 4, ¶11-¶14, i.e., provider distributing content and license in a blockchain network)
Before the effective filing date of the claimed invention, it would have been obvious to one of ordinary skill in the art to modify Matt to include blockchain based provider content/license distribution system to provide contents to recipient as taught by Solow with the motivation to securely provide content based on transaction verification (Solow: Figs. 1, 4, ¶8-¶9, ¶11-¶14)
As regards claim 16, Matt et al combination teaches the electric power tool according to claim 15, wherein when a license transaction request is provided by the client the permissioned blockchain network, endorsing peers of both the licensing provider and the license receiver organization authorize the license transaction request. (Solow: Figs. 1, 4, ¶11-¶14, ¶25-¶38, i.e., provider distributing content and license in a blockchain network)
Before the effective filing date of the claimed invention, it would have been obvious to one of ordinary skill in the art to modify Matt to include blockchain based provider content/license distribution system to provide contents to recipient as taught by Solow with the motivation to securely provide content based on transaction verification (Solow: Figs. 1, 4, ¶8-¶9, ¶11-¶14)
Claim(s) 17, 20 is/are rejected under 35 U.S.C. 103 as being unpatentable over Matt in view of Koerber in view of Brenner in in view of Solow in view of US 20180322491 A1 (hereinafter ‘Mad’).
As regards claim 17, Matt et al combination teaches the electric power tool according to claim 16. Matt et al do not but in analogous art, Mad (US 20180322491 A1) teaches: wherein each endorsing peer using a smart contract to check an identity and authorization of the client and if the client is allowed to contact the blockchain network. (Mad: Figs. 1-2, ¶10-¶15, i.e., blockchain transactions are verified between peers using smart contracts)
Before the effective filing date of the claimed invention, it would have been obvious to one of ordinary skill in the art to modify Matt et al to include commonly used smart contract blockchain technology as taught by Mad with the motivation to blockchain transaction verification (Mad: Figs. 1-2, ¶10-¶15)
As regards claim 20, Matt et al combination teaches the electric power tool according to claim 1. Matt et al do not but in analogous art, Mad (US 20180322491 A1) teaches: wherein the permissioned blockchain network is based on a Hyperledger Fabric platform where peers host smart contracts for executing license transactions. (Mad: Figs. 1-2, ¶10-¶15, i.e., blockchain transactions are verified between peers using smart contracts)
Before the effective filing date of the claimed invention, it would have been obvious to one of ordinary skill in the art to modify Matt et al to include commonly used smart contract blockchain technology as taught by Mad with the motivation to blockchain transaction verification (Mad: Figs. 1-2, ¶10-¶15)
Claim(s) 18 is/are rejected under 35 U.S.C. 103 as being unpatentable over Matt in view of Koerber in view of Brenner in view of US 20210099309 A1 (hereinafter ‘Win’).
As regards claim 18, Matt et al combination teaches the electric power tool according to claim 1. Matt et al do not but in analogous art, Win (US 20210099309 A1) teaches: wherein the certificate is an X.509 certificate that is stored in the client wallet and publicly accessible to other clients through a public key infrastructure (PKI). (Win: Figs. 7F, 8A-8B, 10-10D, ¶163-¶165, i.e., the wallet that performs transactions on a blockchain wherein the wallet uses X.509 pki certificate)
Before the effective filing date of the claimed invention, it would have been obvious to one of ordinary skill in the art to modify Matt et al to include commonly used X.509 PKI certificates for securing digital wallet transactions in blockchain technology as taught by Win with the motivation to blockchain transaction verification (Win: Figs. 7F, 8A-8B, 10-10D, ¶163-¶165)
Conclusion
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/SYED A ZAIDI/Primary Examiner, Art Unit 2432
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