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 .
Claim Status
As of the Office Action dated September 17, 2025 claims 1-8, 11-15 and 18-20 were pending and claims 1-8, 11-15 and 18-20 stood rejected. Claims 1, 11 and 20 have been amended. No claims have been added or cancelled. Claims 1-8, 11-15 and 18-20 are therefore currently pending and are presented for examination on the merits.
Response to Arguments
Applicant’s argument (pages 11-13) with regard to the 35 U.S.C. § 112 (a) rejection of claims 1-8, 11-15 and 18-20 has been fully considered but is not persuasive. The modification of the claim language “…generate a first 3D digital object …comprising the generated first 3D model” does not change the fact that the written disclosure still lacks any recitation of the algorithm used in generating the 3D digital object. Therefore this rejection is being maintained.
Applicant’s argument (pages 13-14) with regard to the 35 U.S.C. § 112 (b) rejection of claims 1-8, 11-15 and 18-20 has been fully considered and is persuasive. It appears that while the heading on page 13 of remarks indicates that this argument is with regard to a rejection under 35 U.S.C. § 112 first paragraph that the heading is incorrect and should have been labeled 35 U.S.C. § 112 second paragraph as the body of the argument is directed towards a finding of indefiniteness. In any event the argument is persuasive. Accordingly the rejection from the Office Action of September 17, 2025 is being withdrawn.
Applicant’s argument with regard to the 35 U.S.C. § 103 rejection of claims 1, 11 and 20 as being unpatentable over Qin in view of Kudela in view of Ortega in view of Madisetti has been fully considered and is persuasive. The only argument however that is persuasive is the argument on pages 17 and 18 with regard to the deficiencies of Madisetti as it applies to amended claims 1, 11 and 20. Therefore the rejection is being withdrawn.
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 1-8, 11-15 and 18-20 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.
Claim 1 recites “…generate a first 3D digital object as a named record forming a digital asset, the named record comprising the generated first 3D model, dimensional data associated with one or more dimensions of the first physical object, the additional details data, and metadata comprising an identifier associated with the first physical object, wherein physical properties of the first physical object are mapped to the first 3D digital object for secure tokenization on a blockchain”. MPEP § 2161.01 requires that a clear description of the invention be present in a computer-implemented functional claim limitation and not merely the result obtained (“…Similarly, original claims may lack written description when the claims define the invention in functional language specifying a desired result but the specification does not sufficiently describe how the function is performed or the result is achieved. For software, this can occur when the algorithm or steps/procedure for performing the computer function are not explained at all or are not explained in sufficient detail (simply restating the function recited in the claim is not necessarily sufficient). In other words, the algorithm or steps/procedure taken to perform the function must be described with sufficient detail so that one of ordinary skill in the art would understand how the inventor intended the function to be performed”). Claims 11 and 20 contain similar recitations. There is no clear algorithm recited for the operation in the written disclosure regarding the generated 3D digital object comprising the generated first 3D model as the written disclosure at paragraph 0054 uses the language “Based on the generated first 3D model, the dimensional data, and the additional details data, the system 102 may be further configured to generate a first three dimensional (3D) digital object”. Therefore the written description must be held as being deficient as there is no clearly specified algorithm for generating a first 3D digital object as the written disclosure merely recites an obtained result without describing how those results were obtained.
Claims 2-8 are also rejected as being dependent upon claim 1.
Claims 12-15 and 18-19 are also rejected as being dependent upon claim 11.
Claim 1 recites “…generate a first 3D digital object as a named record forming a digital asset, the named record comprising the generated first 3D model, dimensional data associated with one or more dimensions of the first physical object, the additional details data, and metadata comprising an identifier associated with the first physical object, wherein physical properties of the first physical object are mapped to the first 3D digital object for secure tokenization on a blockchain”. Claims 11 and 20 contain similar recitations. The written disclosure at paragraph 0054 uses the language “Based on the generated first 3D model, the dimensional data, and the additional details data, the system 102 may be further configured to generate a first three dimensional (3D) digital object”. Clearly the term “based on” is a genus term that is not specific as to what the relationship is between the 3D model and the 3D digital object but is only an indication that a relationship exists. The word “comprising” is a species within the genus “based on” as it explains the “basis” however the written disclosure does not disclose that the 3D digital object “comprises” the 3D model as is being claimed and no support is present within the written disclosure for the claim as the species “comprising” is not found within the written disclosure. Therefore claims 1, 11 and 20 are held as containing newly introduced subject matter not present in the written description.
Claims 2-8 are also rejected as being dependent upon claim 1.
Claims 12-15 and 18-19 are also rejected as being dependent upon claim 11.
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 JAMES D NIGH whose telephone number is (571)270-5486. The examiner can normally be reached 6:00 to 9:45 and 10:30 to 2:45.
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/JAMES D NIGH/Senior Examiner, Art Unit 3699
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