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 .
Election/Restrictions
Applicant's election with traverse of Species A (claims 1-15) in the reply filed on 03/06/2026 is acknowledged. The traversal is on the ground(s) that the restriction does not present a serious search burden. In particular, Applicant submits that Species B (claims 16-20) are similar enough to claims 1-15 as to not present a serious search burden. This is not found persuasive because claim 16 recites limitations directed specifically to physical card generation/manufacturing (e.g. “generating a resource exchange device having a Non-Fungible Token (NFT) identifier that identifies an NFT embedded as encrypted data within one or more of a plurality of pixels forming a digital image imprinted on a facing of the resource exchange device.”) Such limitations would require a separate text search in a different class (e.g. CPC G06K 19/077) and would likely raise different non-prior art issues under 35 USC 112, first paragraph.
The requirement is still deemed proper and is therefore made FINAL.
Claims 16-20 are withdrawn from further consideration pursuant to 37 CFR 1.142(b), as being drawn to a nonelected species, there being no allowable generic or linking claim. Applicant timely traversed the restriction (election) requirement in the reply filed on 03/06/2026.
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.
This application currently names joint inventors. In considering patentability of the claims the examiner presumes that the subject matter of the various claims was commonly owned as of the effective filing date of the claimed invention(s) absent any evidence to the contrary. Applicant is advised of the obligation under 37 CFR 1.56 to point out the inventor and effective filing dates of each claim that was not commonly owned as of the effective filing date of the later invention in order for the examiner to consider the applicability of 35 U.S.C. 102(b)(2)(C) for any potential 35 U.S.C. 102(a)(2) prior art against the later invention.
Claims 1-2, 7, and 10-12 are rejected under 35 U.S.C. 103 as being unpatentable over Tierney et al. (WO 2021231168 "Tierney") in view of Perna et al. (US 20230410072 "Perna") and Tax et al. (US 20240232858 "Tax").
Regarding claims 1 and 11, Tierney discloses: A system and device for resource exchange event authorization, comprising: a resource exchange device configured in a form of a card having two facings, wherein at least one facing has a digital image imprinted thereon, wherein the digital image comprises a plurality of pixels and wherein a identifier is embedded as encrypted data within one or more of the plurality of pixels (Fig. 3a, Pg. 8 line 10-Pg. 9 line 5, Pg. 14 line 29-Pg. 15 line 6);
and a resource exchange device reader apparatus including a memory and one or more computing processor devices in communication with the memory, wherein the memory stores a first resource exchange event authorization application, wherein the resource exchange event authorization application is executable by at least one of the computing device processors and is configured to (Fig. 4-5, Pg. 12 line 28-Pg. 13 line 10):
in response to a user presenting the resource exchange device at the resource exchange device reader to initiate a resource exchange event, scan the digital image to read data stored in the plurality of pixels (Fig. 7, Pg. 12 line 8-11, Pg. 14 line 29-Pg. 15 line 21), wherein reading the data includes decrypting the encrypting data and extracting the identifier (Fig. 7, Pg. 14 line 29-Pg. 15 line 21).
Tierney does not disclose: a Non-Fungible Token (NFT) identifier that identifies an NFT.
However, in the same field of endeavor, Perna discloses: wherein the digital image comprises a plurality of pixels and wherein a Non-Fungible Token (NFT) identifier that identifies an NFT is embedded as encrypted data within one or more of the plurality of pixels (Fig. 3, 0021, 0023, 0026-0027, 0031).
It would have been obvious for one of ordinary skill in the art before the effective filing date of the claimed invention to modify claims 1 and 11 disclosed by Tierney by including an NFT identifier as disclosed by Perna. One of ordinary skill in the art would have been motivated to make this modification as a simple substitution of one known element for another to obtain predictable results (KSR International Co. v. Teleflex Inc., 550 U.S. 398, 82 USPQ2d 1385 (2007)).
Tierney in view of Perna does not disclose: and use the NFT identifier to access a distributed trust computing storing the NFT to validate the NFT and provide first authorization for the resource exchange event.
However, in the same field of endeavor, Tax discloses: and use the NFT identifier to access a distributed trust computing storing the NFT to validate the NFT and provide first authorization for the resource exchange event (Fig. 8, 0162-0169, 0177-0180).
It would have been obvious for one of ordinary skill in the art before the effective filing date of the claimed invention to modify claims 1 and 11 disclosed by Tierney by including an blockchain storage database as disclosed by Tax. One of ordinary skill in the art would have been motivated to make this modification as a simple substitution of one known element (transaction account database of Tierney) for another (blockchain database of Tax) to obtain predictable results (KSR International Co. v. Teleflex Inc., 550 U.S. 398, 82 USPQ2d 1385 (2007)).
Regarding claims 2 and 12, Tierney in view of Perna and Tax discloses all limitations of claims 1 and 11. Tierney further discloses: wherein the digital image comprises at least one selected from the group consisting of (i) a background image imprinted on the at least one facing of the card, and (ii) a logo image imprinted on the at least one facing of the card (Fig. 3a, Fig. 10, Pg. 8 line 10-Pg. 9 line 5, Pg. 19 line 3-10).
Regarding claim 7, Tierney in view of Perna and Tax discloses all limitations of claims 1 and 11. Tierney further discloses: wherein the resource exchange device further comprises an embedded microprocessor chip (Fig. 3a, Pg. 7 line 20-Pg. 8 line 2).
Regarding claim 10, Tierney in view of Perna and Tax discloses all limitations of claims 7. Tierney further discloses the embedded microprocessor chip storing data such as cryptographic keys (Pg. 7 line 20-Pg. 8 line 2).
Tierney in view of Perna and Tax fails to expressly disclose wherein the embedded microprocessor chip does not store any user identifying data or resource exchange depository identifying data.
However, the difference between the data stored/not stored in Tierney and not storing any user identifying data or resource exchange depository identifying data is only found in the non-functional descriptive material and are not functionally involved in the steps recited. The storing steps would be performed the same regardless of the descriptive material since none of the steps explicitly interact therewith. Limitations that are not functionally interrelated with the useful acts, structure, or properties of the claimed invention carry little or no patentable weight. Thus, this descriptive material will not distinguish the claimed invention from the prior art in terms of patentability. See In re Ngai 367 F.3d 1336, 1339, 70 USPQ2d 1862 (Fed. Cir. 2004); In re Lowry, 32 USPQ2d 1031 (Fed. Cir. 1994); MPEP § 2111.05; Cf. In re Gulack, 703 F.2d 1381, 1385, 217 USPQ 401, 404 (Fed. Cir. 1983).
Therefore, it would also have been obvious to a person of ordinary skill in the art at the time of applicant’s invention to not store particular data (e.g. any user identifying data or resource exchange depository identifying data) because such data does not functionally relate to the steps in the method claimed and because the subjective interpretation of the data does not patentably distinguish the claimed invention.
Claims 3-6 and 13-14 are rejected under 35 U.S.C. 103 as being unpatentable over Tierney in view of Perna and Tax as applied to claims 1 and 11 above, and further in view of Lau et al. (US 20190163944 "Lau").
Regarding claims 3 and 13, Tierney in view of Perna and Tax discloses all limitations of claims 1 and 11.
Tierney in view of Perna and Tax does not disclose: wherein segments of the NFT identifier are embedded in two or more first pixels from amongst the plurality of pixels, and wherein the segments are configured to form an entirety of the NFT identifier.
However, in the same field of endeavor, Lau discloses: wherein segments of the NFT identifier are embedded in two or more first pixels from amongst the plurality of pixels, and wherein the segments are configured to form an entirety of the NFT identifier (Fig. 11-11a, 0112-0114).
It would have been obvious for one of ordinary skill in the art before the effective filing date of the claimed invention to modify claims 3 and 13 disclosed by Tierney in view of Perna and Tax by including embedding segments of the identifier in a plurality of pixels as disclosed by Lau. One of ordinary skill in the art would have been motivated to make this modification through use of known techniques to improve similar devices in the same way (KSR International Co. v. Teleflex Inc., 550 U.S. 398, 82 USPQ2d 1385 (2007)).
Regarding claim 4, Tierney in view of Perna, Tax, and Lau discloses all limitations of claim 3. Lau further discloses: wherein the resource exchange event authorization application is further configured to extract the NFT identifier by determining which of the plurality of pixels are the selected first pixels having embedded segments of the NFT identifier (Fig. 11-12, 0032, 0112-0114, 0134).
Regarding claim 5, Tierney in view of Perna, Tax, and Lau discloses all limitations of claim 4. Lau further discloses: wherein the resource exchange event authorization application is further configured to extract the NFT identifier by determining a sequence in which the segments of the NFT identifier are to be configured to form the NFT identifier.
Regarding claims 6 and 14, Tierney in view of Perna, Tax, and Lau discloses all limitations of claims 3 and 13. Tierney further discloses: wherein fake data is embedded within one or more second pixels from amongst the plurality of pixels, wherein the second pixels are different than the first pixels and wherein the fake data is configured to resemble a segment of the NFT identifier (Fig. 9, Pg. 17 line 22-28).
Claims 8 and 15 are rejected under 35 U.S.C. 103 as being unpatentable over Tierney in view of Perna and Tax as applied to claims 7 and 11 above, and further in view of Khan et al. (USP 12137168 "Khan").
Regarding claims 8 and 15, Tierney in view of Perna and Tax discloses all limitations of claims 7 and 11. Tierney further discloses: wherein the resource exchange device further comprises an embedded microprocessor chip (Fig. 3a, Pg. 7 line 20-Pg. 8 line 2).
Tierney in view of Perna and Tax does not disclose: wherein the memory of the resource exchange device reader further stores a second resource exchange event authorization application that is configured to: in response to the user presenting the resource exchange device at the resource exchange device reader to initiate the resource exchange event, read data stored on the embedded microprocessor chip and communicate at least a portion of the data to a resource exchange event authorization entity configured to validate the portion of the data and provide second authorization for the resource exchange event, wherein both the first authorization and the second authorization are required to finalize the resource exchange event.
However, in the same field of endeavor, Khan discloses: wherein the memory of the resource exchange device reader further stores a second resource exchange event authorization application that is configured to: in response to the user presenting the resource exchange device at the resource exchange device reader to initiate the resource exchange event, read data stored on the embedded microprocessor chip and communicate at least a portion of the data to a resource exchange event authorization entity configured to validate the portion of the data and provide second authorization for the resource exchange event, wherein both the first authorization and the second authorization are required to finalize the resource exchange event (Fig. 4, Col 15 line 28-Col 16 line 27).
It would have been obvious for one of ordinary skill in the art before the effective filing date of the claimed invention to modify claims 8 and 15 disclosed by Tierney in view of Perna and Tax by including multifactor authentication as disclosed by Khan. One of ordinary skill in the art would have been motivated to make this modification to ensure ownership of both the transaction account and NFT (Khan Col 10 line 14-25).
Claim 9 is rejected under 35 U.S.C. 103 as being unpatentable over Tierney in view of Perna and Tax as applied to claim 7 above, and further in view of Misra et al. (US 20130173372 "Misra").
Regarding claim 9, Tierney in view of Perna and Tax discloses all limitations of claim 7.
Tierney in view of Perna and Tax does not disclose: wherein the first resource exchange event authorization application is further configured to: in response to the user presenting the resource exchange device at the resource exchange device reader to initiate the resource exchange event, determine that data stored in the pixels is unable to be read, and wherein the memory of the resource exchange device reader further stores a second resource exchange event authorization application that is configured to: in response to receiving notification that data stored in the pixels is unable to be read, read data stored on the embedded microprocessor chip and communicate at least a portion of the data to a resource exchange event authorization entity configured to validate the portion of the data and provide second authorization for the resource exchange event.
However, in the same field of endeavor, Misra discloses: wherein the first resource exchange event authorization application is further configured to: in response to the user presenting the resource exchange device at the resource exchange device reader to initiate the resource exchange event, determine that data stored in the pixels is unable to be read, and wherein the memory of the resource exchange device reader further stores a second resource exchange event authorization application that is configured to: in response to receiving notification that data stored in the pixels is unable to be read, read data stored on the embedded microprocessor chip and communicate at least a portion of the data to a resource exchange event authorization entity configured to validate the portion of the data and provide second authorization for the resource exchange event (0038).
It would have been obvious for one of ordinary skill in the art before the effective filing date of the claimed invention to modify claim 9 disclosed by Tierney in view of Perna and Tax by including using the chip for authorization when the image/pixels cannot be read/scanned as disclosed by Misra. One of ordinary skill in the art would have been motivated to make this modification as a simple substitution of one known element for another to obtain predictable results (KSR International Co. v. Teleflex Inc., 550 U.S. 398, 82 USPQ2d 1385 (2007)).
Conclusion
The prior art made of record and not relied upon is considered pertinent to applicant's disclosure.
Kenen et al. (US 20050010776) generally discloses systems and methods for embedding encrypted data into physical identification documents.
Otero (US 20160246970) generally discloses a method for concealing sensitive information on a portable device (e.g. a credit card) via a steganographic image.
Ogiera et al. (“False and multi-secret steganography in digital images”) generally discloses methods for embedding both false and real information in digital images via various steganographic techniques (see e.g. Abstract, Pg. 3332).
Any inquiry concerning this communication or earlier communications from the examiner should be directed to TAYLOR RAK whose telephone number is (571)270-1575. The examiner can normally be reached Monday-Friday 11:00-7:00 EST.
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, John W Hayes can be reached at (571)-272-6708. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
Information regarding the status of published or unpublished applications may be obtained from Patent Center. Unpublished application information in Patent Center is available to registered users. To file and manage patent submissions in Patent Center, visit: https://patentcenter.uspto.gov. Visit https://www.uspto.gov/patents/apply/patent-center for more information about Patent Center and https://www.uspto.gov/patents/docx for information about filing in DOCX format. For additional questions, contact the Electronic Business Center (EBC) at 866-217-9197 (toll-free). If you would like assistance from a USPTO Customer Service Representative, call 800-786-9199 (IN USA OR CANADA) or 571-272-1000.
/T.R./Examiner, Art Unit 3697
/JOHN W HAYES/Supervisory Patent Examiner, Art Unit 3697
Prosecution Insights