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and the fee set forth in 37 CFR 1.17(e) has been timely paid, the finality of the previous Office action has been withdrawn pursuant to 37 CFR 1.114.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 02/03/2026 has been entered.
Status of Claims
Claims 11, 15-16, 18-19, 25-26, 28-29, and 34 have been amended. Claims 1-10, 12-14, 20, 22-23, and 31-32 were canceled. Claims 11, 15-19, 21, 24-30, and 33-34 are pending and presented for examination.
Response to Arguments
In response to the remark that Pardo U.S. 2023/0034621 does not encrypt a viewing key that accesses a smart contract and mint an NFT of the encrypted viewing key itself using the same smart contract, it was the combination of Pardo U.S. 2023/0034621 in view of Bursell et al. U.S. 2020/0234294 that was used to teach these limitations. Therefore, the Applicant’s remark is presented against the references individually, specifically, only Pardo, and 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). Please see below for the detailed rejection.
Applicant’s amendments to claims 11 and 25 have overcome the previous prior art rejection. Therefore, the 35 U.S.C. 103 rejections set forth in the Final Rejection 11/05/2025 have been withdrawn. However, upon further consideration, a new ground(s) of rejection is made in view of Corduan et al. U.S. 2019/0007205.
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 11, 15-19, 24-29, and 33 are rejected under 35 U.S.C. 103 as being unpatentable over Pardo U.S. 2023/0034621 in view of Bursell et al. U.S. 2020/0234294 (herein referred to as “Bursell”), and further in view of Corduan et al. U.S. 2019/0007205 (herein as “Corduan”).
Re Claim 11, Pardo discloses a computer implemented method, the method comprising:
creating a smart contract, wherein the smart contract stores […] data and is deployed on a blockchain network ([0155] – “generating the smart contract 150,” [0098] – “allow for smart contracts to be distributed (i.e. deployed) securely on the blockchain network,” [0165] – “the NFT metadata 122 is stored in the smart contract 150”);
obtaining a viewing key, wherein the viewing key controls access to the […] data ([0112] – “the NFTs are digital keys in a set,” [0138] – “the NFTs are obtained,” i.e. obtaining a viewing key, [0112] - “a new key is minted to the user which represents a new key that can be used to open the lock,” i.e. access the data);
executing the smart contract on the blockchain network to mint a non-fungible token of the […] key ([0199] – “one or more of the rules 124 of the smart contract 150 can be performed by the nodes 112, such as minting a new NFT 120,” [0112] – “The NFTs are digital keys in a set,” thereby suggesting, the NFT is the key);
generating a plurality of shares based on the non-fungible token ([0113] – “a single NFT may be divided into fractions (i.e. shares), such that the fractions themselves may indicate partial ownership of the NFT”) […], wherein the plurality comprises at least three shares ([0164] – “a first fraction and a second fraction of the one NFT 120 (or also a third fraction , etc.),” thereby suggesting at least three fractions, i.e. three shares) […].
Pardo does not expressly disclose
the data is encrypted user data of the smart contract,
encrypting the viewing key,
the key to access the data of the smart contract is the viewing key.
Bursell discloses providing smart contracts including secrets encrypted with oracle-provided encryption keys. Specifically, Bursell discloses
the data is encrypted user data of the smart contract (Fig. 1 – smart contract (26) encompassing ciphertext (34) of sensitive data 24, Fig. 2A, 66, [0035] – encrypt sensitive data (24) for a smart contract (26) into ciphertext (34) using the symmetric cryptographic key K (32), [0028] – “sensitive data 24, which represents any sensitive data that is required to carry out an operation to be performed by a smart contract 26…the sensitive data 24 may comprise a cryptographic key for authenticating an identity of a user of the contract creator 12 and/or for authorizing an operation on behalf of a user of the contract creator 12,”i.e. user data);
encrypting the viewing key (Fig. 2A, 72, [0035] – encrypt the symmetric cryptographic key K (32) into a wrapper (38), [0031] – “the symmetric cryptographic key K 32 required to decrypt the ciphertext 34,” therefore, the symmetric cryptographic key K 32 is a viewing key to access the encrypted sensitive data).
the key to access the data of the smart contract is the viewing key (Fig. 2A, 38 – the symmetric cryptographic key K encrypted into a wrapper forms the encrypted viewing key, [0031] – “the symmetric cryptographic key K 32 required to decrypt the ciphertext 34,” therefore, the symmetric cryptographic key K 32 is a viewing key to access the encrypted sensitive data of the smart contract).
It would have been obvious to a person of ordinary skill in the art before the effective filing date of the claimed invention to modify Pardo’s NFT system and method with the teachings of encrypting sensitive data in a smart contract and encrypting the cryptographic key that accesses the encrypted sensitive data in the smart contract in Bursell. One would be motivated to make this combination to enable sensitive data to be incorporated directly into smart contracts in encrypted form using encryption keys, thereby securing sensitive data within smart contracts and protecting it from unauthorized access in the event the smart contract is malicious or is compromised Bursell, [0001], [0003], [0104].
However, Pardo in view of Bursell do not explicitly teach
using a secret sharing algorithm (to generate a plurality of shares), such that at least two of the plurality of shares, but less than all of the plurality of shares, is required to recover the non-fungible token, wherein each of the plurality of shares has a respective private key; and
storing a first private key for at least a first share of the plurality of shares in a smart wallet or remote electronic device of a user currently associated with the encrypted user data,
storing a second private key for at least a second share of the plurality of shares by a custody service, and
providing a respective private key for each of the remaining shares of the plurality of shares to one or more recipients.
Corduan discloses a system and method for persona management in online environments. Specifically, Corduan discloses
using a secret sharing algorithm (to generate a plurality of shares), such that at least two of the plurality of shares, but less than all of the plurality of shares, is required to recover the non-fungible token [0028], wherein each of the plurality of shares has a respective private key [0022]; and
storing a first private key for at least a first share of the plurality of shares in a smart wallet or remote electronic device of a user currently associated with the encrypted user data ([0023] – “distribute the portions/shares of the private key to the trusted parties,” [0021] – “Each trusted party may be, for example, a second computer of the user,” i.e. remote electronic device of a user).
storing a second private key for at least a second share of the plurality of shares by a custody service ([0023] – “distribute the portions/shares of the private key to the trusted parties,” [0021] – “Each trusted party may be, for example…a healthcare provider, the persona management system owner, etc.,” a custody service as described in the instant specification paragraph [062] is offered by a trusted source to store crypto assets, since the shares are distributed to trusted parties, a trusted party is reasonably analogous to a custody service), and
providing a respective private key for each of the remaining shares of the plurality of shares to one or more recipients ([0023] – “distribute the portions/shares of the private key to the trusted parties,” [0028] – “a secret could be split into five shares,” therefore, more than 2 shares of private key are distributed).
It would have been obvious to a person of ordinary skill in the art before the effective filing date of the claimed invention to modify Pardo in view of Bursell’s NFT system and method with the teachings of using a secret sharing scheme to generate a plurality of shares and distribute the shares to a plurality of trusted parties in Corduan. One would be motivated to make this combination to maintain security of sensitive personal information while solving the private cryptography key loss problem Corduan, [0006].
Re Claim 15, Pardo in view of Bursell and Corduan teach the computer implemented method of claim 11, and Pardo in view of Bursell and Corduan further teach further comprising:
storing the respective private key for each of the remaining shares in a smart wallet associated with each of the one or more recipients (Corduan, [0030] – “Each such party must have a wallet,” thereby suggesting the private key shares are stored in the trusted party’s wallet).
It would have been obvious to a person of ordinary skill in the art before the effective filing date of the claimed invention to modify Pardo in view of Bursell’s NFT system and method with the teachings of storing the respective private key in a wallet in Corduan. One would be motivated to make this combination to maintain security of sensitive personal information while solving the private cryptography key loss problem Corduan, [0006].
Re Claim 16, Pardo in view of Bursell and Corduan teach the computer implemented method of claim 11, and Pardo in view of Bursell and Corduan further teach further comprising:
upon detection of an occurrence of an activation event, transferring the respective private key of the at least a second share of the plurality of shares to a selected one of the one or more recipients (Pardo, [0199] – “a first device 118(1)(Alice) wishes to transfer the NFT 120 to a second device 118(2)(Bob) (i.e. selected recipient)…the first device 118(1) initiates a transaction on the blockchain 130 (i.e. activation event)…the second device 118(2) receives the NFT 120…by receiving a private key,” i.e. transferring the respective private key, [0200] suggests the NFT transfer method can be implemented in a similar fashion for the NFT 120 that has a plurality of fractions, i.e. transferring the respective private key of the at least a second share of the plurality of shares).
Re Claim 17, Pardo in view of Bursell and Corduan teach the computer implemented method of claim 16, and Pardo in view of Bursell and Corduan further teach wherein the detection and the transferring are executed by an activation smart contract Pardo, [0159] – “As with many smart contracts on the blockchain, the smart contract 150 includes both detection and execution. The smart contract 150 can identify the particular condition or trigger of the smart contract 150 and what is to be performed by the node 112…the execution of the rule 124 can include the node 112 transferring another NFT 120 to the client device 118.”
Re Claim 18, Pardo in view of Bursell and Corduan teach the computer implemented method of claim 11, and Pardo in view of Bursell and Corduan further teach wherein three shares are generated, the respective private key for one first share is stored in the smart wallet or the remote electronic device of the currently associated user and the respective key for one second share is stored in by the custody service, the method further comprising:
determining that an activation event has occurred (Pardo, Fig. 9 902 – 1st client device wants to send the NFT to 2nd client device, i.e. an activation event);
in response to the determining, transferring the respective private key of the second share to a selected one of the one or more recipients (Pardo, Fig. 9 914 – 2nd device receives the NFT, i.e. NFT is transferred, [0199] – “receives the NFT 120 on the blockchain 130, for example by receiving a private key”).
However, Pardo in view of Bursell do not explicitly teach
enabling the selected one of the one or more recipients to access the encrypted user data stored in the smart contract using the respective private key of the second share and the respective private key of the remaining share previously provided to the selected one of the one or more recipients.
Corduan discloses a system and method for persona management in online environments. Specifically, Corduan discloses
enabling the selected one of the one or more recipients to access the encrypted user data stored in the smart contract using the respective private key of the second share and the respective private key of the remaining share previously provided to the selected one of the one or more recipients ([0048]-[0050] – once the private key is reconstructed after obtaining a subset of the shares based on the threshold setting, the wallet can be accessed).
It would have been obvious to a person of ordinary skill in the art before the effective filing date of the claimed invention to modify Pardo in view of Bursell’s NFT system and method with the teachings of enabling access to data based on multiple private key shares in Corduan. One would be motivated to make this combination to maintain security of sensitive personal information while solving the private cryptography key loss problem Corduan, [0006].
Re Claim 19, Pardo in view of Bursell and Corduan the computer implemented method of claim 11, however, Pardo does not expressly disclose
wherein the currently associated user is enabled to view the encrypted user data stored in the smart contract using respective private key of the at least first share and the respective private key of the at least second share.
Bursell discloses providing smart contracts including secrets encrypted with oracle-provided encryption keys. Specifically, Bursell discloses
wherein the currently associated user is enabled to view the encrypted user data stored in the smart contract (Fig. 1 – smart contract (26) encompassing ciphertext (34) of sensitive data 24, Fig. 2A, 66, [0035] – encrypt sensitive data (24) for a smart contract (26) into ciphertext (34) using the symmetric cryptographic key K (32), [0031] – “the symmetric cryptographic key K 32 required to decrypt the ciphertext 34,” therefore, the symmetric cryptographic key K 32 is a viewing key to access the encrypted sensitive data and possession of such would enable viewing of the sensitive data).
It would have been obvious to a person of ordinary skill in the art before the effective filing date of the claimed invention to modify Pardo’s NFT system and method with the teachings of accessing sensitive data in a smart contract via a cryptographic key in Bursell. One would be motivated to make this combination to secure sensitive data within smart contracts Bursell, [0001].
Corduan discloses a system and method for persona management in online environments. Specifically, Corduan discloses
using respective private key of the at least first share and the respective private key of the at least second share (to access/view data) [0049-50].
It would have been obvious to a person of ordinary skill in the art before the effective filing date of the claimed invention to modify Pardo in view of Bursell’s NFT system and method with the teachings of enabling access to data using multiple private key shares in Corduan. One would be motivated to make this combination to maintain security of sensitive personal information while solving the private cryptography key loss problem Corduan, [0006].
Re Claim 24, Pardo in view of Bursell and Corduan teach the method of claim 11, and Pardo in view of Bursell and Corduan further teach wherein the at least a first share comprises one first share, the at least a second share comprises one second share, and the remaining shares comprise one remaining share (Pardo, [0164] – “such as a first fraction and a second fraction of the one NFT 120 (or also a third fraction, etc.),” each fraction is analogous to one share).
Re Claims 25-29 and 33, they are the system claims of method claims 11, 16-19, and 24, respectively. They recite similar distinguishing features of the method claims. Furthermore, Pardo discloses a plurality of processors Fig. 2 202, Fig. 3 302, Fig. 7 702 to carry out the NFT system and NFT method disclosed. Therefore, claims 25-29 and 33 are rejected for the same reasons above.
Claims 21 and 30 are rejected under 35 U.S.C. 103 as being unpatentable over Pardo U.S. 2023/0034621 in view of Bursell et al. U.S. 2020/0234294 (herein referred to as “Bursell”), and further in view of Corduan et al. U.S. 2019/0007205 (herein as “Corduan”) as applied to claims 16 and 26 above, and further in view of Jung et al. U.S. 2008/0133392 (herein referred to as “Jung”).
Re Claim 21, Pardo in view of Bursell and Corduan teach the method of claim 16, however, Pardo in view of Bursell and Corduan do not explicitly teach further comprising monitoring for occurrence of the activation event by sending messages to the currently associated user and receiving responses from the currently associated user, and wherein detection of the occurrence of the activation event occurs when the currently associated user does not provide a response to a status update message.
Jung discloses security arrangements for virtual world obligations. Specifically, Jung discloses
monitoring for occurrence of the activation event by sending messages to the currently associated user and receiving responses from the currently associated user, and wherein detection of the occurrence of the activation event occurs when the currently associated user does not provide a response to a status update message ([0290] – “making a determination that the virtual character is no longer deemed a viable participant by confirming one or more of the following virtual world occurrences…lack of response to specific probes,” i.e. message(s)).
It would have been obvious to a person of ordinary skill in the art before the effective filing date of the claimed invention to modify Pardo in view of Bursell and Corduan’s NFT system and method with the teachings of determining a lack of response to specific probes in Jung. One would be motivated to make this combination to determine that a participant is no longer a viable participant, thereby initiating transfer of a virtual property right to a designated successor Jung, [0284].
Re Claim 30, it is the system claim of method claim 21. It recites similar distinguishing features of the method claim. Therefore, it is rejected for the same reasons above.
Claim 34 is rejected under 35 U.S.C. 103 as being unpatentable over Pardo U.S. 2023/0034621 in view of Bursell et al. U.S. 2020/0234294 (herein referred to as “Bursell”), and further in view of Corduan et al. U.S. 2019/0007205 (herein as “Corduan”) as applied to claim 11 above, and further in view of Yang et al. U.S. 2021/0044429 (herein as “Yang”).
Re Claim 34, Pardo in view of Bursell and Corduan teach the method of claim 11, however, Pardo in view of Bursell and Corduan do not explicitly teach wherein the remote electronic device storing the first private key of the first share of the plurality of shares is a biometric security device.
Yang discloses biometric data protection during decentralized biometric authentication. Specifically, Yang discloses
wherein the remote electronic device storing the first private key of the first share of the plurality of shares is a biometric security device [0062] – “a user device may use one or more trusted personal electronic devices 145 in order to interact with the transaction director or provider…may be utilized for capturing biometric samples.”
It would have been obvious to a person of ordinary skill in the art before the effective filing date of the claimed invention to modify Pardo in view of Bursell and Corduan’s remote electronic device with the teachings of a biometric security device in Yang. The combination is a simple substitution of one known element for another to obtain predictable results.
Conclusion
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/CHRISTINE DANG/Examiner, Art Unit 3698