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
Claims 1 – 20 are pending.
Any references to applicant’s specification are made by way of applicant’s U.S. pre-grant printed patent publication.
This action is in response to the communication filed on 3/19/26.
All objections and rejections not set forth below have been withdrawn.
Drawings
The drawings are objected to under 37 CFR 1.83(a). The drawings must show every feature of the invention specified in the claims. Therefore, the features of:
“…a key controlled by the user…” (e.g. claims 1, 11);
an “asymmetric privacy mechanism comprising obfuscation, rotating obfuscation, and/or split private blockchains” (e.g. claims 1, 11);
“…a compensation tracker …” (e.g. claims 1);
must be shown or the feature(s) canceled from the claim(s). No new matter should be entered.
Corrected drawing sheets in compliance with 37 CFR 1.121(d) are required in reply to the Office action to avoid abandonment of the application. Any amended replacement drawing sheet should include all of the figures appearing on the immediate prior version of the sheet, even if only one figure is being amended. The figure or figure number of an amended drawing should not be labeled as “amended.” If a drawing figure is to be canceled, the appropriate figure must be removed from the replacement sheet, and where necessary, the remaining figures must be renumbered and appropriate changes made to the brief description of the several views of the drawings for consistency. Additional replacement sheets may be necessary to show the renumbering of the remaining figures. Each drawing sheet submitted after the filing date of an application must be labeled in the top margin as either “Replacement Sheet” or “New Sheet” pursuant to 37 CFR 1.121(d). If the changes are not accepted by the examiner, the applicant will be notified and informed of any required corrective action in the next Office action. The objection to the drawings will not be held in abeyance.
Specification
The specification is objected to as failing to provide proper antecedent basis for the claimed subject matter. See 37 CFR 1.75(d)(1) and MPEP § 608.01(o). Correction of the following is required:
The applicant’s specification fails to provide antecedent basis for “…a compensation tracker comprising a blockchain-based logging mechanism…” (e.g. claim 1).
Claim Rejections - 35 USC § 112
The following is a quotation of the first paragraph of 35 U.S.C. 112(a):
(a) IN GENERAL.—The specification shall contain a written description of the invention, and of the manner and process of making and using it, in such full, clear, concise, and exact terms as to enable any person skilled in the art to which it pertains, or with which it is most nearly connected, to make and use the same, and shall set forth the best mode contemplated by the inventor or joint inventor of carrying out the invention.
The following is a quotation of the first paragraph of pre-AIA 35 U.S.C. 112:
The specification shall contain a written description of the invention, and of the manner and process of making and using it, in such full, clear, concise, and exact terms as to enable any person skilled in the art to which it pertains, or with which it is most nearly connected, to make and use the same, and shall set forth the best mode contemplated by the inventor of carrying out his invention.
Claims 1 – 20 are rejected under 35 U.S.C. 112(a) or 35 U.S.C. 112 (pre-AIA ), first paragraph, as failing to comply with the written description requirement. The claim(s) contains subject matter which was not described in the specification in such a way as to reasonably convey to one skilled in the relevant art that the inventor or a joint inventor, or for applications subject to pre-AIA 35 U.S.C. 112, the inventor(s), at the time the application was filed, had possession of the claimed invention.
Regarding claims 1 and 11, the applicant’s specification fails to adequately disclose the claimed subject matter of “…a key controlled by the user…”. Specifically, the applicant’s specification makes only a single reference to the idea that items within a container may be encrypted (e.g. Specification, par. 16). However, the applicant fails to ever disclose key or a key that is controlled by the user.
Regarding claims 1 and 11, the applicant’s specification fails to adequately disclose the claimed subject matter of “…the smart contract being tied to a library non- fungible token (NFT) associated with a plurality of data containers …”. Specifically, the applicant’s specification only teaches that the smart contract allows a user to opt in/out of having data included within a “library NFT” (e.g. Specification, par. 26). However, the applicant fails to teach that the smart contract is “tied” to a “library NFT” or that the “library NFT” is “associated with a plurality of data containers”.
Regarding claims 1 and 11, the applicant’s specification fails to adequately disclose the claimed subject matter of “and user identities and data usage are hidden by an asymmetric privacy mechanism comprising obfuscation, rotating obfuscation, and/or split private blockchains”.
Specifically, the applicant’s disclosure fails to illustrate “asymmetric privacy mechanisms”, or any other mechanisms, for hiding user identities and data usage according to obfuscation, rotating obfuscation, and split private blockchains. Furthermore, the examiner notes that the applicant fails to disclose obfuscation, rotating obfuscation, split private blockchains, and any form of combination of such.
Regarding claims 1, the applicant’s specification fails to teach a “compensation tracker comprising a blockchain-based logging mechanism” or that a “compensation tracker comprising a blockchain-based logging mechanism” is configured to record, on a blockchain, compensation to a producer of private information when a consumer accesses the closed data.
Depending claims are rejected by virtue of dependency.
The following is a quotation of 35 U.S.C. 112(b):
(b) CONCLUSION.—The specification shall conclude with one or more claims particularly pointing out and distinctly claiming the subject matter which the inventor or a joint inventor regards as the invention.
The following is a quotation of 35 U.S.C. 112 (pre-AIA ), second paragraph:
The specification shall conclude with one or more claims particularly pointing out and distinctly claiming the subject matter which the applicant regards as his invention.
Claims 1 – 20 are rejected under 35 U.S.C. 112(b) or 35 U.S.C. 112 (pre-AIA ), second paragraph, as being indefinite for failing to particularly point out and distinctly claim the subject matter which the inventor or a joint inventor (or for applications subject to pre-AIA 35 U.S.C. 112, the applicant), regards as the invention.
Regarding claims 1 and 11, the recitation of “a library non-fungible token (NFT)” does not have any standard meaning within the art. Furthermore, the applicant’s specification fails to provide any clear and concrete definition to the term. Thus, the scope of the claims are rendered indefinite.
Regarding claims 1 and 11, the recitation of “and user identities and data usage are to hidden by an asymmetric privacy mechanism comprising obfuscation, rotating obfuscation, and/or split private blockchains” renders the scope of the claims indefinite.
Specifically, the examiner notes that it would appear to one of ordinary skill in the art that the term “obfuscation” would fall within the scope of “rotating obfuscation”, and thus, it would be unclear as to the scope of a claim which recites the subject matter of “obfuscation” as an augmentation to the claimed subject matter of “rotating obfuscation”.
Regarding claims 1 and 20, the recitation of “and user identities and data usage are to hidden by an asymmetric privacy mechanism comprising obfuscation, rotating obfuscation, and/or split private blockchains” renders the scope of the claims indefinite.
Specifically, the examiner notes that the term “split private blockchains” does not appear to have any standard meaning within the art, and the applicant’s disclosure fails to provide any definition to the term. Thus, the scope of the claimed subject matter is indefinite.
Claim limitation “…a compensation tracker configured to…” invokes 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph. However, the written description fails to disclose the corresponding structure, material, or acts for performing the entire claimed function and to clearly link the structure, material, or acts to the function. Specifically, the applicant’s specification fails to illustrate a “compensation tracker” and fails to even use the term “compensation tracker”.
Therefore, the claim is indefinite and is rejected under 35 U.S.C. 112(b) or pre-AIA 35 U.S.C. 112, second paragraph.
Applicant may:
(a) Amend the claim so that the claim limitation will no longer be interpreted as a limitation under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph;
(b) Amend the written description of the specification such that it expressly recites what structure, material, or acts perform the entire claimed function, without introducing any new matter (35 U.S.C. 132(a)); or
(c) Amend the written description of the specification such that it clearly links the structure, material, or acts disclosed therein to the function recited in the claim, without introducing any new matter (35 U.S.C. 132(a)).
If applicant is of the opinion that the written description of the specification already implicitly or inherently discloses the corresponding structure, material, or acts and clearly links them to the function so that one of ordinary skill in the art would recognize what structure, material, or acts perform the claimed function, applicant should clarify the record by either:
(a) Amending the written description of the specification such that it expressly recites the corresponding structure, material, or acts for performing the claimed function and clearly links or associates the structure, material, or acts to the claimed function, without introducing any new matter (35 U.S.C. 132(a)); or
(b) Stating on the record what the corresponding structure, material, or acts, which are implicitly or inherently set forth in the written description of the specification, perform the claimed function. For more information, see 37 CFR 1.75(d) and MPEP §§ 608.01(o) and 2181.
Depending claims are rejected by virtue of dependency.
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.
Claims 1 – 20 are rejected under 35 U.S.C. 103 as being unpatentable over Agbamu, US 2023/0316261 A1 in view of Walt.id (Walt), “Decentralized Identity & Data Monetization”.
Regarding claim 1, as best understood in view of the above noted deficiencies of clarity, Agbamu discloses:
a content provider (e.g. Agbamu, par. 7) to maintain one or more data containers (e.g. Agbamu, par. 76, 80; fig. 1:108, 128, 110 – centralized and decentralized storage of blockchains – i.e. “data containers”; see also, fig. 1:130a; par. 123, 124 – portable IDs containing private user information – i.e. “data containers”) comprising private information and privacy settings of a user (e.g. Agbamu, par. 88, 95, 112, 113, 123, 124 – a portable ID comprising a user’s decentralized identity or “DID” is controlled by the identity owner’s private keys and permission settings for regulating levels of private information disclosure) the data containers including closed data comprising one or more encrypted data elements encrypted with a key controlled by the user … (e.g. Agbamu, fig. 1:128, 110; par. 45, 55, 88, 92, 95)
Agbamu teaches that data on a blockchain (i.e. “data container”) may be encrypted (e.g. Agbamu, par. 93), however, does not appear to explicitly teach that data on the blockchain can be unencrypted, or “open data comprising one or more non-encrypted or publicly accessible data elements accessible without encryption ”.
However, the examiner notes that this feature was well-known in the art and thus obvious that blockchains can also store unencrypted data. This would further have been obvious to one of ordinary skill in the art because the language of Agbamu that encryption “may” be used for certain data on a blockchain would imply that data on the blockchain may also be unencrypted.
Thus, Agbamu enables “open” or unencrypted data, and furthermore:
and a service provider to provide a service to the user (e.g. Agbamu, par. 9, 66, 78, 152), wherein the service is associated with a smart contract (e.g. Agbamu, par. 8, 92, 94, 95, 109, 145) that is determined according to the privacy settings of the user … (e.g. Agbamu, par. 88, 95, 123, 124). Herein, a service’s transactions are facilitated using (i.e. “associated with”) portable IDs or “smart contracts” that are controlled according to the user’s private keys and permissions (i.e. “privacy settings”) for identity disclosure.
the smart contract being tied to a library non-fungible token (NFT) associated with a plurality of data containers (e.g. Agbamu, fig. 1:110; par. 8, 10, 89, 96, 97, 102, 145 – herein a plurality of non-fungible tokens representing identities are stored in association with one or more smart contracts),
and user identities and data usage are to hidden by an asymmetric privacy mechanism comprising obfuscation, rotating obfuscation, and/or split private blockchains (e.g. Agbamu, par. 88, 89, 92, 93, 94 – user identities and data usage is protected according to encryption, zk proofs, etc. (i.e. obfuscated using asymmetric privacy mechanisms), and stored with blockchains and smart contracts (i.e. an asymmetric key mechanisms)).
Agbamu discloses a system for allowing holders of decentralized identity data to provide access to the decentralized identity data (e.g. Agbamu, par. 127), however, does not appear to explicitly teach tracking compensation for the access of decentralized identity data. However, Walt teaches that decentralized identity data should be monetizable (e.g. Walt, pg. 3, “Summary”; pg. 7, “Why monetize identity data?”), and further teaches that access to decentralized identity data should be tracked and compensation for the access be provided to producers of the data (e.g. issuers and/or holders) and be recorded onto a settlement layer, such as a registry and/or blockchain (e.g. Walt, pg. 10 – 15; fig. “Hybrid Model”; pg. 10: “How it works”; pg. 15: “Note on Payments).
It would have been obvious to one of ordinary skill in the art to employ the teachings of Walt within Agbamu, essentially for tracking the access of decentralized identifier data and compensating issuers and/or holders for the access via a settlement layer, such as a blockchain. This would have been obvious because one of ordinary skill in the art would have been motivated by the teachings that it is advantageous to monetize the access to decentralized identifiers (e.g. Walt, pg. 3, “Summary”; pg. 7, “Why monetize identity data?”).
Thus, the combination enables:
and a compensation tracker comprising a blockchain -based logging mechanism configured to record, on a blockchain, compensation to a producer of the private information when a consumer accesses the closed data (e.g. Agbamu, par. 10, 62, 64, 122, 123, 127; Walt, pg. 10 – 15; fig. “Hybrid Model”; pg. 10: “How it works”; pg. 15: “Note on Payments).
Regarding claim 2, the combination enables:
wherein the content provider aggregates content of a plurality of users (e.g. Agbamu, par. 6 – 8). Herein, the system onboards and manages a plurality of portable IDs for a plurality of users.
Regarding claim 3, the combination enables:
wherein when the user signs up to the service, the service provider updates the smart contract according to the privacy settings of the user (e.g. Agbamu, par. 105, 136 - 138 – e.g. when a user onboards (i.e. “signs up”) to a new entity, e.g. a DMV that may provide the user with a new license, the new entity may update the user’s previously issued DID or portable ID with new metadata and identity information which is signed and authenticated by the user’s private keys.
Regarding claim 4, the combination enables:
wherein when the service provider is a social media service (e.g. Agbamu, par. 40, 102, 126, 150).
Regarding claim 5, the combination enables:
wherein when the service provider uses, sells or licenses the private information of the user, the smart contract is tracked and enforced using a token and a blockchain. (e.g. Agbamu, par. 71, 80, 104, 125, 132). The user’s portable ID – a smart-contract comprising a NFT or ‘non-fungible token’, contains the user’s private information which is processed or “used” by the service provider to perform transactions. All such transactions are tied to the user’s portable ID and tracked by the system using a blockchain.
Regarding claim 6, the combination enables:
wherein when the user is notified that a third-party used their private information. (e.g. Agbamu, par. 62). All transactions using user data is tracked and recorded in a public blockchain, i.e. the user is publicly notified.
Regarding claim 7, the combination enables:
wherein permissions are automatically approved or disapproved via a data wallet. (e.g. Agbamu, par. 88, 96, 97, 102).
Regarding claim 8, the combination enables:
wherein an approval by the user is tracked (e.g. Agbamu, par. 88, 96, 97, 102 - 104).
Regarding claim 9, the combination enables:
wherein the user is notified in real-time when any of their private information is being packaged or used (e.g. Agbamu, par. 105, 133, 136 - 138). A user interacts with the service provider and is required to sign the any updates to their private information by service providers who use such information to onboard the user. Furthermore, all transactions using their private information is recorded in the public blockchain, i.e. the user is publicly notified (e.g. Agbamu, par. 62).
Regarding claim 10, the combination enables:
wherein during a third-party usage of their private information, their smart contract may change according to their privacy settings within a particular media site. (e.g. Agbamu, par. 105, 133, 135 - 138).
Regarding claims 11 – 20, they are method claims, essentially corresponding to the system claims above, and they are rejected, at least, for the same reasons.
Response to Arguments
Applicant's arguments filed 3/19/26 have been fully considered but they are not persuasive.
Applicant argues or alleges essentially that:
…
The specification repeatedly describes recording usage and compensation on a blockchain and associating such tracking with data container access and NFT-based permissions. Thus, the claimed compensation tracker is clearly supported and understood in light of the specification. …
… Applicant respectfully submits that the amended claims clarify the nature of the recited features and that such features are inherently supported by the illustrated architecture. Applicant therefore respectfully requests withdrawal of the drawing objection.
…
(Remarks, pg. 6, 7)
Examiner respectfully responds:
The examiner disagrees, at least for the reason that the applicant fails to provide any specific evidence or identification of any specific portion of applicant’s specification that teaches a “compensation tracker” or “a blockchain-based logging mechanism”.
Applicant argues or alleges essentially that:
…
With respect to the limitation reciting a smart contract tied to a library NFT associated with a plurality of data containers, the specification and figures provide direct support. The specification explains … These disclosures demonstrate that the claimed relationship between smart contracts, NFTs, and data containers is expressly contemplated and described.
…
(Remarks, pg. 8, 9)
Examiner respectfully responds:
The examiner disagrees, at least for the reason that the applicant fails to provide any specific evidence or identification of any specific portion of applicant’s specification that teaches “…the smart contract being tied to a library non- fungible token (NFT) associated with a plurality of data containers …”.
Applicant argues or alleges essentially that:
…
With respect to the "asymmetric privacy mechanism comprising obfuscation, rotating obfuscation, and/or split private blockchains," … A POSITA would recognize that such architectures inherently implement asymmetric privacy models and that techniques such as obfuscation and partitioning across blockchain structures are well-known implementations of such models. The claims therefore recite specific implementations of the disclosed system and do not introduce new matter.
…
(Remarks, pg. 9)
Examiner respectfully responds:
The examiner disagrees, at least for the reason that the applicant fails to provide any evidence as to the understanding of a POSITA, nor does the applicant identify any specific portion of applicant’s specification that explains an “asymmetric privacy mechanism comprising obfuscation, rotating obfuscation, and/or split private blockchains”.
Applicant argues or alleges essentially that:
…
With respect to the "compensation tracker," the specification clearly discloses … The amendment clarifies that the compensation tracker comprises a blockchain-based logging mechanism, which directly corresponds to the disclosed functionality. This clarification resolves any perceived ambiguity while remaining fully supported by the specification. …
(Remarks, pg. 9)
Examiner respectfully responds:
The examiner disagrees, at least for the reason that the applicant fails to provide any specific evidence or identification of any specific portion of applicant’s specification that teaches a “compensation tracker” or “a blockchain-based logging mechanism”.
Applicant argues or alleges essentially that:
…
The Applicant traverses these rejections, but to advance prosecution has amended claims 1 and 11. Claims 1 and 11 as amended render moot and therefore overcome the rejection under 35 U.S.C. 103.
For at least the forementioned reasons, the pending claims as amended are allowable.
…
(Remarks, pg. 10)
Examiner respectfully responds:
Applicant's arguments fail to comply with 37 CFR 1.111(b) because they amount to a general allegation that the claims define a patentable invention without specifically pointing out how the language of the claims patentably distinguishes them from the references.
Applicant's arguments do not comply with 37 CFR 1.111(c) because they do not clearly point out the patentable novelty which he or she thinks the claims present in view of the state of the art disclosed by the references cited or the objections made. Further, they do not show how the amendments avoid such references or objections.
Thus, the examiner respectfully notes that the applicant’s arguments do not appear to be persuasive.
Conclusion
THIS ACTION IS MADE FINAL. Applicant is reminded of the extension of time policy as set forth in 37 CFR 1.136(a).
A shortened statutory period for reply to this final action is set to expire THREE MONTHS from the mailing date of this action. In the event a first reply is filed within TWO MONTHS of the mailing date of this final action and the advisory action is not mailed until after the end of the THREE-MONTH shortened statutory period, then the shortened statutory period will expire on the date the advisory action is mailed, and any nonprovisional extension fee (37 CFR 1.17(a)) pursuant to 37 CFR 1.136(a) will be calculated from the mailing date of the advisory action. In no event, however, will the statutory period for reply expire later than SIX MONTHS from the mailing date of this final action.
Any inquiry concerning this communication or earlier communications from the examiner should be directed to JEFFERY L WILLIAMS whose telephone number is (571)272-7965. The examiner can normally be reached on 7:30 am - 4:00 pm.
If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Farid Homayounmehr can be reached on 571-272-3739. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
Information regarding the status of an application may be obtained from the Patent Application Information Retrieval (PAIR) system. Status information for published applications may be obtained from either Private PAIR or Public PAIR. Status information for unpublished applications is available through Private PAIR only. For more information about the PAIR system, see http://pair-direct.uspto.gov. Should you have questions on access to the Private PAIR system, contact the Electronic Business Center (EBC) at 866-217-9197 (toll-free). If you would like assistance from a USPTO Customer Service Representative or access to the automated information system, call 800-786-9199 (IN USA OR CANADA) or 571-272-1000.
/JEFFERY L WILLIAMS/Primary Examiner, Art Unit 2495