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 .
Status of Claims
This action is in reply to the application filed on December 13, 2022.
Claims 1-20 are currently pending and have been examined.
Information Disclosure Statement
The Information Disclosure Statement filed on March 20, 2024 has been considered. An initialed copy of the Form 1449 is enclosed herewith.
Priority
The later-filed application must be an application for a patent for an invention which is also disclosed in the prior application (the parent or original non-provisional application or provisional application). The disclosure of the invention in the parent application and in the later-filed application must be sufficient to comply with the requirements of 35 U.S.C. § 112(a) or the first paragraph of pre-AIA 35 U.S.C. § 112, except for the best mode requirement. See Transco Products, Inc. v. Performance Contracting, Inc., 38 F.3d 551, 32 USPQ2d 1077 (Fed. Cir. 1994)
The disclosure of the prior-filed application, provisional Application No. 63/289530, fails to provide adequate support or enablement in the manner provided by 35 U.S.C. § 112(a) or pre-AIA 35 U.S.C. § 112, first paragraph for one or more claims of this application. Specifically, the provisional application 63/289530 fails to provide written description support for any of the substantive limitations (i.e., the steps or functions) of independent Claims 1, 16, and 20. In other words, the provisional application fails to provide sufficient support for substantive steps of receive, from a first device via the communications interface, a request to generate an identifier associated with a digital token, the digital token being associated with an immutable digital asset and an immutable smart contract object of a distributed ledger, based on the request, and confirmation that the request was made by or for an owner of the digital asset, generate and transmit, via the communications interface and to a first computing system, the identifier, receive, via the communications interface and from the first computing system, a message including the identifier and metric data associated with the digital asset, the metric data identifying and characterizing one or more metrics associated with one or more interactions of the digital asset by one or more additional devices via the first computing system, based at least on the identifier included in the message, transmit, via the communications interface and to the first device, the metric data, and cause a first application program executing on the first device to record, within at least a first element of the distributed ledger, an object that includes one or more portions of the metric data. Instead, at best, the provisional application supports a dashboard that reports on royalties regarding digital assets (see, e.g., the drawings in the provisional application 63/289530).
Because the provisional application does not mention or even imply any kind of request for a generation of an identifier or transmitting any metrics based on the identifiers, one of ordinary skill in the art would not have been apprised, looking to the provisional application, that Applicant possessed the claims filed in this instant application. Therefore, these claims do not get priority of the filing date of the provisional application (i.e., December 14, 2021) and instead will be given a prior art date of December 13, 2022.
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 non-statutory subject matter. When considering subject matter eligibility under 35 U.S.C. § 101, there are multiple steps that may need to be assessed. First, in step 1 it must be determined whether the claim is directed to one of the four statutory categories of invention, i.e., process, machine, manufacture, or composition of matter. If the claim does fall within one of the statutory categories, it must then be determined in step 2A prong 1 whether the claim is directed to a judicial exception (i.e., law of nature, natural phenomenon, and abstract idea). If the claim is directed toward a judicial exception, it must then be determined in step 2A prong 2 whether the judicial exception is integrated into a practical application. Finally, if the judicial exception is not integrated into a practical application, it must additionally be determined in step 2B whether the claim recites “significantly more” than the abstract idea. See “2019 Revised Patent Subject Matter Eligibility Guidance,” 84 Fed. Reg. (4): 50-57 (Jan. 7, 2019).
In the instant case, Claims 1-15 are directed toward a system, i.e., apparatus, Claims 10-19 are directed toward a method, i.e., process, and Claim 20 is directed toward a non-transitory computer readable medium, i.e., article of composition. Thus, each of the claims falls within one of the four statutory categories as required by step 1. Nevertheless, the claims are directed toward the judicial exception of an abstract idea in step 2A prong 1. Independent Claim 1 recites as follows:
Claim 1. An apparatus, comprising:
a communications interface;
a memory storing instructions; and
at least one processor coupled to the communications interface and to the memory, the at least one processor being configured to execute the instructions to:
receive, from a first device via the communications interface, a request to generate an identifier associated with a digital token, the digital token being associated with an immutable digital asset and an immutable smart contract object of a distributed ledger;
based on the request, and confirmation that the request was made by or for an owner of the digital asset, generate and transmit, via the communications interface and to a first computing system, the identifier;
receive, via the communications interface and from the first computing system, a message including the identifier and metric data associated with the digital asset, the metric data identifying and characterizing one or more metrics associated with one or more interactions of the digital asset by one or more additional devices via the first computing system; and
based at least on the identifier included in the message, transmit, via the communications interface and to the first device, the metric data; and
cause a first application program executing on the first device to record, within at least a first element of the distributed ledger, an object that includes one or more portions of the metric data.
The bold language above corresponds to the abstract ideas recited in Claim 1 (whereas the underlined language is language that is addressed in step 2A prong 2 and step 2B). As the bold language above demonstrates, Applicant’s claims are directed toward recording data, i.e., “metrics,” regarding assets. This is a method of organizing human activity, specifically commercial interactions. See MPEP § 2106.04(a)(2)(II)(B). Because the instant invention is recording metrics regarding assets, the invention is reciting a certain method of organizing human activities, specifically commercial interactions. Examiner further notes that because an identifier could be generated and recorded in the human mind as well as that the metric data could be recorded in the human mind (or with the addition of, e.g., pen and paper), the claims recite an abstract mental process. See MPEP § 2106.04(a)(2)(III).
Finding the claims to be directed toward an abstract idea, however, is not the end of the inquiry. Rather, the next step is to determine whether the judicial exception is integrated into a practical application (step 2A prong 2). The revised guidance provides exemplary considerations that are indicative that an additional element or combination of elements may have integrated the exception into a practical application: 1) an additional element reflecting an improvement in the functioning of a computer or an improvement to another technology or technical field, 2) an additional element that implements the judicial exception with a particular machine or manufacture that is integral to the claim, 3) an additional element that effects a transformation or reduction of a particular article to a different state or thing, or 4) an additional element that applies or uses 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 § 2106.04(d). Examples where a judicial exception has not been integrated into a practical application include: 1) use of “apply it” or the equivalent, i.e., merely using a computer to implement or perform an abstract idea, 2) an additional element that adds insignificant extra-solution activity to the judicial exception, and 3) an additional element that does no more than generally link the use of the judicial exception to a particular technological environment or field of use. See id.
Applying these considerations to the claims in the instant application, the claims do not integrate the judicial exception into a practical application. The claims fail to recite an improvement of a computer, any improvement to a technology or technical field, any particular machine, any transformation or reduction of a particular article to a different state or thing, or any additional element that uses the judicial exception in a meaningful way. Instead, the claims are merely reciting instructions to implement the abstract idea on a computer (i.e., “a communications interface,” “a memory,” and “at least one processor coupled to the communications interface and to the memory, the at least one processor being configured to execute the instructions to” perform the steps of the invention), which is insufficient to provide a practical application of the claims and provide subject matter eligibility. See id. Furthermore, while distributed ledgers and digital tokens are mentioned, these are merely a field of use or technological environment to which the abstract idea is applied, which does not provide any integration into a practical application. See MPEP § 2106.05(h). Therefore, there is no integration of the abstract idea into a practical application.
If the claims are not integrated into a judicial exception, the Examiner must consider whether there is “significantly more” recited in the claim in step 2B. See MPEP § 2106.05. There is nothing unconventional or inventive in Applicant’s claims for the purpose of analysis under step 2B, e.g., any combination of elements that provide an advance over any technological state of the art. Rather, as noted above, an abstract commercial interaction or mental process is merely implemented by a general-purpose computer and applied to a field of use of immutable ledgers. Other than the limitations that are abstract for the reasons articulated above, Applicant has merely recited generic computers that facilitates the steps of the invention. Thus, Applicant’s claims merely recite a computer to implement the abstract idea, which fails to provide “significantly more” than the abstract idea.
As the MPEP states, Examiners may consider the following three factors when determining whether the claim recites mere instructions to implement an abstract idea on a computer: 1) whether the claim recites only the idea of a solution or outcome, i.e., the claim fails to recite details of how a solution to a problem is accomplished; 2) whether the claim invokes computers or other machinery merely as a tool to perform an existing process; and 3) the particularity or generality of the application of the judicial exception. See MPEP § 2106.05(f). Applying those factors to the instant application: 1) the claims do not recite how the computer performs any of the steps other than just stating that they do it; 2) the claims invoke the computer to perform a process of asset tracking that has been performed without computers and before the ubiquity of computers; and 3) the claims are generic and not recited in much particularity because it can apply to any way of tracking the products.
The dependent claims 2-15 and 17-19 are merely reciting further embellishments of the abstract idea and do not amount to anything that is significantly more than the abstract idea itself. In other words, none of the dependent claims recite an improvement to a technology or technical field or provide any meaningful limitations that, in an ordered combination provide “significantly more” or providing any integration into a practical application. Rather, the dependent claims are merely further reciting features that are just as abstract as independent Claims 1, 16, and 20. Therefore, Claims 1-20 are directed to non-statutory subject matter and are rejected as ineligible subject matter under 35 U.S.C. § 101.
Claim Rejections - 35 USC § 102
In the event the determination of the status of the application as subject to AIA 35 U.S.C. §§ 102 and 103 (or as subject to pre-AIA 35 U.S.C. §§ 102 and 103) is incorrect, any correction of the statutory basis for the rejection will not be considered a new ground of rejection if the prior art relied upon, and the rationale supporting the rejection, would be the same under either status.
The following is a quotation of the appropriate paragraphs of 35 U.S.C. § 102 that form the basis for the rejections under this section made in this Office action:
A person shall be entitled to a patent unless –
(a)(2) the claimed invention was described in a patent issued under section 151, or in an application for patent published or deemed published under section 122(b), in which the patent or application, as the case may be, names another inventor and was effectively filed before the effective filing date of the claimed invention.
Claims 1-20 are rejected under 35 U.S.C. § 102(a)(2) as being anticipated by Quigley et al. (US 2023/0274245 A1, hereinafter “Quigley”).
Claim 1. Quigley teaches: An apparatus, comprising:
a communications interface (see, e.g., ¶ 1084 teaching that a user can utilize his or her “viewer device” to access the rights to the digital item assuming that the user, via that computer, proves that the NFT provides the correct cryptographic key, i.e., when the DRM rules are satisfied; see also ¶ 1082 disclosing substantially the same; see further Figure 1 feature 190 and ¶s 442-444 teaching a user device and interface for utilizing the invention and accessing the digital items);
a memory storing instructions (see, e.g., ¶s 218, 320, 588, 768, 1155, 1168, and 1173 teaching that the invention can utilize stored instructions on a memory); and
at least one processor coupled to the communications interface and to the memory (see, e.g., ¶s 218, 320, 588, 768, 1155, 1168, and 1173 teaching that the invention can utilize stored instructions on a memory that, when executed by a processor, performs the steps of the invention), the at least one processor being configured to execute the instructions to:
receive, from a first device via the communications interface, a request to generate an identifier associated with a digital token, the digital token being associated with an immutable digital asset and an immutable smart contract object of a distributed ledger (see, e.g., ¶ 250 teaching a request to generate a unique identifier associated with an NFT that is associated with a digital object and is stored in a distributed ledger and controlled by a smart contract; see also ¶s 452, 484, 489, 492-493 et seq. disclosing substantially the same; see further ¶s 1076-1124 teaching a digital rights management system that utilizes non-fungible tokens stored in the decentralized distributed ledger that serve to limit access of the digital items to only those with the particular computing system that is authorized to access it via the NFT, noting, e.g., ¶s 1081-1082 and 1085-1089 teaching that the NFTs can enforce smart contracts that effectuate the digital rights as well as that ¶s 1091-1092 teach a unique identifier for the NFT);
based on the request, and confirmation that the request was made by or for an owner of the digital asset, generate and transmit, via the communications interface and to a first computing system, the identifier (see, e.g., ¶s 1076-1124 teaching a digital rights management system that utilizes non-fungible tokens stored in the decentralized distributed ledger that serve to limit access of the digital items to only those with the particular computing system that is authorized to access it via the NFT, noting, e.g., ¶s 1081-1082 and 1085-1089 teaching that the NFTs can enforce smart contracts that effectuate the digital rights as well as that ¶s 1091-1092 teach a unique identifier for the NFT);
receive, via the communications interface and from the first computing system, a message including the identifier and metric data associated with the digital asset, the metric data identifying and characterizing one or more metrics associated with one or more interactions of the digital asset by one or more additional devices via the first computing system (see, e.g., ¶s 1076-1124 teaching a digital rights management system that utilizes non-fungible tokens stored in the decentralized distributed ledger that serve to limit access of the digital items to only those with the particular computing system that is authorized to access it via the NFT, noting, e.g., ¶s 1081-1082 and 1085-1089 teaching that the NFTs can enforce smart contracts that effectuate the digital rights as well as that ¶s 1091-1092 teach a unique identifier for the NFT; see further ¶s 1091, 1095, 1097, 1103, and 1107 teaching a “use counter” that identifies a metric regarding how the digital asset is used or interacted with and provides a right restriction on the asset); and
based at least on the identifier included in the message, transmit, via the communications interface and to the first device, the metric data (see, e.g., ¶s 1091, 1095, 1097, 1103, and 1107 teaching a “use counter” that identifies a metric regarding how the digital asset is used or interacted with and provides a right restriction on the asset and that the use metric, including each time it is updated, is recorded in the distributed ledger); and
cause a first application program executing on the first device to record, within at least a first element of the distributed ledger, an object that includes one or more portions of the metric data (see, e.g., ¶s 1091, 1095, 1097, 1103, and 1107 teaching a “use counter” that identifies a metric regarding how the digital asset is used or interacted with and provides a right restriction on the asset and that the use metric, including each time it is updated, is recorded in the distributed ledger).
Regarding Claims 16 and 20, these claims are coextensive with Claim 1 other than reciting a different statutory category. Specifically, Claim 16 recites a computer-implemented method and Claim 20 recites a non-transitory computer readable medium. Both claims recite the same functional steps. Because the claims are essentially co-extensive, the rejection of Claim 1 above relying on Quigley to anticipate the claims is incorporated herein. Thus, Quigley anticipates Claims 16 and 20. Similarly coextensive claims will be addressed together below for the sake of brevity.
Claims 2 and 17. Quigley teaches the limitations of Claims 1 and 16. Quigley further teaches: The apparatus of claim 1, wherein the at least one processor is further configured to: cause the first application program executing on the first device to present a graphical representation of at least one of the one or more metrics within a digital interface (see, e.g., Figure 1 feature 190 teaching a user device; see further ¶ 444 noting that the user device 190 is any computing device with a display that can access the platform via, e.g., the Internet; see further, e.g., ¶ 472 teaching the seller of the NFT using a GUI to user device 190 allowing the seller to sell the item; see additionally ¶s 110-111 teaching performing the analytics and an application programming interface for displaying the metrics/historical information).
Claims 3 and 18. Quigley teaches the limitations of Claims 2 and 17. Quigley further teaches: The apparatus of claim 2, wherein the at least one processor causes the first application program executing on the first device to present the graphical representation of at least one of the one or more metrics within the digital interface based on the recordation of the object that includes the one or more portions of the metric data (see Figure 1 and ¶ 1006 teaching an analytics and reporting system 112 that obtains and generates analytics by reading and storing the minting data of the smart contract or NFT including, e.g., data such as download and playing data for music, i.e., number of times the digital asset was interacted with; see further ¶s 42 and 48 teaching that the digital asset can include a song or album, noting that, e.g., ¶ 572 teaches a display for digital tokens corresponding to a particular band or artist, such as download codes for an album or song as well as that ¶ 1012 teaches providing a display for tokens related to creative projects such as music albums).
Claim 4. Quigley teaches the limitations of Claim 3. Quigley further teaches: The apparatus of claim 3, wherein the first application program is maintained by the apparatus (see, e.g., Figure 1 teaching tokenization platform 100 that includes application programs 102, 104, 106, 108, 110, 112, 114, 116, and 118).
Claims 5 and 19. Quigley teaches the limitations of Claims 4 and 18. Quigley further teaches: The apparatus of claim 4, wherein the first application program maintained by the apparatus accesses one or more objects of the distributed ledger through a decentralized application program executing on the first device (see, e.g., at least ¶ 423, 424, and 523 teaching that the invention utilizes distributed ledger technology via a decentralized system distributed over different computer systems; see further ¶ 1006 teaching an analytics and reporting system 112 that obtains and generates analytics by reading and storing the minting data of the smart contract or NFT including, e.g., data such as download and playing data for music).
Claim 6. Quigley teaches the limitations of Claim 5. Quigley further teaches: The apparatus of claim 5, wherein the one or more objects may include data of previously recorded one or more portions of previously obtained metric data (see, e.g., ¶s 927, 950, 954, 1084, and 1095-1096 teaching tracking how many times the digital item was accessed as part of a digital rights management system).
Claim 7. Quigley teaches the limitations of Claim 1. Quigley further teaches: The apparatus of claim 1, wherein the first computing system is further configured to:
monitor the one or more interactions of the digital asset by one or more users, other than the digital asset owner, of the one or more additional devices and via the first computing system (see, e.g., ¶s 49, 66, and 1076-1090 teaching digital rights management method for enforcing the rights of the owner/seller of the digital asset/token/NFT; see also, e.g., ¶s 425-430 teaching the user interacting with various functions of the smart contract; see also ¶s 596-598, 780-783, 975, and 1002 teaching keyboard interactions regarding transferring tokens between users; see also, e.g., ¶s 1091, 1095, 1097, 1103, and 1107 teaching a “use counter” that identifies a metric regarding how the digital asset is used or interacted with and provides a right restriction on the asset and that the use metric, including each time it is updated, is recorded in the distributed ledger); and
generate the metric data (see, e.g., ¶s 1076-1090 teaching digital rights management method for enforcing the rights of the owner/seller of the digital asset/token/NFT).
Claim 8. Quigley teaches the limitations of Claim 1. Quigley further teaches: The apparatus of claim 1, wherein the distributed ledger includes one or more smart contract objects, each of the one or more smart contract objects includes at least one element identifying a particular computing system (see ¶s 1076-1124 teaching a digital rights management system that utilizes non-fungible tokens stored in the decentralized distributed ledger that serve to limit access of the digital items to only those with the particular computing system that is authorized to access it via the NFT, noting, e.g., ¶s 1081-1082 and 1085-1089 teaching that the NFTs can enforce smart contracts that effectuate the digital rights as well as that ¶ 1084 teaches that a user can utilize his or her specific computer system to access the rights to the digital item assuming that the user, via that computer, proves that the NFT provides the correct cryptographic key, i.e., when the DRM rules are satisfied).
Claim 9. Quigley teaches the limitations of Claim 8. Quigley further teaches: The apparatus of claim 8, wherein the at least one processor is further configured to identify one or more computing systems based on each of the one or more smart contract objects of the distributed ledger, the one or more computing systems including the first computing system (see ¶s 1076-1124 teaching a digital rights management system that utilizes non-fungible tokens stored in the decentralized distributed ledger that serve to limit access of the digital items to only those with the particular computing system that is authorized to access it via the NFT, noting, e.g., ¶s 1081-1082 and 1085-1089 teaching that the NFTs can enforce smart contracts that effectuate the digital rights as well as that ¶ 1084 teaches that a user can utilize his or her specific computer system to access the rights to the digital item assuming that the user, via that computer, proves that the NFT provides the correct cryptographic key, i.e., when the DRM rules are satisfied).
Claim 10. Quigley teaches the limitations of Claim 10. Quigley further teaches: The apparatus of claim 1, wherein the first computing system is further configured to present at least a portion of the digital asset within a digital interface of at least one of the one or more additional devices (see, e.g., ¶ 572 teaching a display for digital tokens corresponding to a particular band or artist, such as download codes for an album or song; see also ¶ 1012 teaching providing a display for tokens related to creative projects such as music albums).
Claim 11. Quigley teaches the limitations of Claim 1. Quigley further teaches: The apparatus of claim 1, wherein the digital asset includes at least one of music content, video content, imaging content, gaming content, and document content (see ¶ 1006 teaching an analytics and reporting system 112 that obtains and generates analytics by reading and storing the minting data of the smart contract or NFT including, e.g., data such as download and playing data for music, i.e., number of times the digital asset was interacted with; see further ¶s 42, and 48 teaching that the digital asset can include a song or album and ¶s 438, 479, and 572 teaching that the token can represent an item such as a music album).
Claim 12. Quigley teaches the limitations of Claim 3. Quigley further teaches: The apparatus of claim 1, wherein the digital token is a non-fungible token (see, e.g., at least ¶s 42-50 disclosing the digital asset can be a non-fungible token).
Claim 13. Quigley teaches the limitations of Claim 3. Quigley further teaches: The apparatus of claim 11, wherein the digital asset is music content, and wherein the one or more metrics includes at least one of a number of indications the digital asset was liked, a number of times the digital asset was interacted with, a number of times the digital asset was added to a list associated with an account of at least one of the one or more additional devices, wave form and tempo (see ¶ 1006 teaching an analytics and reporting system 112 that obtains and generates analytics by reading and storing the minting data of the smart contract or NFT including, e.g., data such as download and playing data for music, i.e., number of times the digital asset was interacted with; see further ¶s 42, and 48 teaching that the digital asset can include a song or album and ¶s 438, 479, and 572 teaching that the token can represent an item such as a music album; see also, e.g., ¶s 1091, 1095, 1097, 1103, and 1107 teaching a “use counter” that identifies a metric regarding how the digital asset is used or interacted with and provides a right restriction on the asset and that the use metric, including each time it is updated, is recorded in the distributed ledger).
Claim 14. Quigley teaches the limitations of Claim 1. Quigley further teaches: The apparatus of claim 1, wherein the digital asset is stored in a database (see at least ¶ 1030 teaching storing the distributed ledgers, ownership data, supporting data, etc. in databases, datastores, filesystems, etc.).
Claim 15. Quigley teaches the limitations of Claim 1. Quigley further teaches: The apparatus of claim 1, wherein the digital asset is stored in an object included in the distributed ledger (see further ¶s 42, and 48 teaching that the digital asset can include a song or album and ¶s 438, 479, and 572 teaching that the token can represent an item such as a music album).
Conclusion
The prior art made of record and not relied upon is considered pertinent to Applicant’s disclosure: Clark et al., US 2023/0139878 A1; Yantis et al., 2021/0326849 A1; and Dunkeld et al., US 8,706,636 B2.
Any inquiry concerning this communication or earlier communications from the Examiner should be directed to JAN P MINCARELLI whose telephone number is (571)270-5909. The examiner can normally be reached on Monday through Friday, 8:00 AM to 4:30 PM Eastern Time.
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, Nathan C. Uber can be reached at (571)270-3923. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/JAN P MINCARELLI/Primary Examiner, Art Unit 3626