DETAILED ACTION 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and the fee set forth in 37 CFR 1.17(e) has been timely paid, the finality of the previous Office action has been withdrawn pursuant to 37 CFR 1.114.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 August 25, 2025 has been entered.
Response to Amendment
The amendment filed on August 25, 2025 has been entered. Applicant has amended claims 1, 3, 5, 10 and 11. Claims 1 and 3-11 remain pending, have been examined, and currently stand rejected.
Priority
Applicant’s claim for the benefit of a prior-filed application under 35 U.S.C. 119(e) or under 35 U.S.C. 120, 121, 365(c), or 386(c) is acknowledged.
Information Disclosure Statement
The information disclosure statements (IDS’s) submitted on 5/14/2025, 7/24/2025 and 7/31/2025 are in compliance with provisions of 37 CFR 1.97. Accordingly, the information disclosure statements have been considered by the examiner.
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 . 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.
Claim Objection
Claim 10 and 11 are objected to for the following informalities:
The claim 10 preamble recites, in part, “wherein a plurality of ledger notes provides an electronic bulletin board.” As best understood, “ledger notes” should be amended to recite “ledger nodes.”
The claim 11 preamble recites, in part, “wherein a plurality of ledger notes provides an electronic bulletin board.” As best understood, “ledger notes” should be amended to recite “ledger nodes.”
Appropriate correction is required.
Claim Interpretation
Non-Functional Language:
Regarding Claims 1, 10 and 11: The phrase which recites “wherein the item is a tangible object”, found in claims 1, 10 and 11, is merely providing non-functional characteristics (i.e., descriptive material) about the item. The fact that the item is a tangible object fails affect how any of the positively recited steps are perform. Additionally, the fact that the item is a tangible object fails affect the structure of the system or its components performing the associated step(s).
These phrases will not distinguish the invention from the prior art in terms of patentability.
Claim Rejections - 35 USC § 112
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.
Claims 5-8, 10 and 11 are rejected under 35 U.S.C. 112(b) as being indefinite for failing to particularly point out and distinctly claim the subject matter which the inventor or a joint inventor regards as the invention.
Regarding Claim 5: Claim 5 recites, in part, “wherein the user terminal acquires a return rate to be set for the resale royalty right and transmits the item registration request including the return rate to the server apparatus.” This limitation is unclear because it is unknown if the return rate recited in claim 5 differs from the return rate recited in claim 1. Independent claim 1 recites that the user terminal acquires a return rate according to the information regarding the resale royalty right for the item. Claim 1 also indicates that the user terminal transmits an item registration request including the return rate. Claim 5 then indicates that the user terminal acquires “a return rate” and transmits an item registration request including the return rate. The fact that claim 5 acquires “a return rate” instead of “the return rate” suggests that these return rates could be different, however claim 5 also recites that the return rate is “set for the resale royalty right” which is also what the return rate is set for in independent claim 1. In view of the claim language, it is unclear whether a single return rate is acquired/transmitted/set and claim 5 is unnecessarily duplicating steps recited in claim 1, or if claim 5 is acquiring/transmitting/setting an additional return rate (i.e., there are two or more return rates set for the resale royalty right), or if claim 5 is replacing/updating the return rate acquired/transmitted/set in claim 1, or something else altogether. As best understood in view of the disclosure, it appears that a single return rate is acquired, transmitted and set for the resale royalty right. See e.g., Specification [0278]. In order to further prosecution, Examiner has interpreted the return rate acquired and transmitted by the user terminal in claim 1 to be the same return rate acquired and transmitted in claim 5. Claims 6-8 are also rejected under 35 U.S.C. 112(b) based on their dependency to claim 5.
Regarding Claim 5: Claim 5 recites, in part, “wherein the server apparatus generates the ownership right certificate described in the biometric information of a resale royalty right holder and information about the return rate.” This limitation is unclear. In particular, it is unclear what it means to generate a certificate “described in the biometric information.” For example, it is unclear if applicant is suggesting that certificate information is added to, or included in, the biometric information (e.g., embedding information into the biometric data), or if the certificate uses the biometric information as an identifier to indicate who should receive the resale royalty right, or something else altogether. As best understood, this limitation is indicating that “the biometric information” (i.e., the biometric information of the author – see claim 1 for antecedent basis) should be associated with the resale royalty right holder in the ownership right certificate. See e.g., Fig. 38. In order to further prosecution, the claim has been interpreted in this manner. Claims 6-8 are also rejected under 35 U.S.C. 112(b) based on their dependency to claim 5.
Regarding Claim 10: Claim 10 recites, in part, “A control method performed by a user terminal used by an author of an item, wherein a plurality of ledger notes provides an electronic bulletin board, and wherein the control method comprises: […].” Claim 10 then recites “wherein the server apparatus generates an ownership right certificate based on information included in the item registration request, writes on the electronic bulletin board a transaction including the generated ownership right certificate and transmits a transaction ID corresponding to the transaction to the user terminal.” Since the preamble of the claim indicates the method is performed by the user terminal, it is unclear whether the steps attributed to the server apparatus are part of the claimed method. As best understood, the method is supposed to include the steps performed by the server apparatus. In order to further prosecution, the claims have been interpreted in this manner.
Regarding Claim 11: Claim 11 recites, in part, “non-transitory computer-readable storage medium storing a program executable by a computer mounted on a user terminal used by an author of an item to perform processing, wherein a plurality of ledger notes provides an electronic bulletin board, and wherein the processing comprises: […].” Claim 11 then recites “wherein the server apparatus generates an ownership right certificate based on information included in the item registration request, writes on the electronic bulletin board a transaction including the generated ownership right certificate and transmits a transaction ID corresponding to the transaction to the user terminal.” Since the preamble of the claim indicates that the program is executable/executed by a computer mounted on a user terminal, it is unclear whether the steps attributed to the server apparatus are also part of the executable instructions on the computer-readable storage medium. As best understood, the computer-readable storage medium is supposed to comprise the program/instructions for the computer mounted on the user terminal and the server apparatus. In order to further prosecution, the claims have been interpreted in this manner.
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 and 3-11 are rejected under 35 U.S.C. 101 because the claimed invention recites and is directed to a judicial exception to patentability (i.e., an abstract idea) and does not provide an integration of the recited abstract idea into a practical application nor include an inventive concept that is “significantly more” than the recited abstract idea to which the claim is directed. MPEP §2106.
In determining subject matter eligibility in an Alice rejection under 35 U.S.C. §101, it is first determined as Step 1 whether the claims are directed to one of the four statutory categories of an invention (i.e., a process, a machine, a manufacture, or a composition of matter). MPEP §2106.03. Here, it is determined that claims 1 and 3-9 are directed to the statutory category of a machine, claim 10 is directed to the statutory category of a process, and claim 11 is directed to the statutory category of a manufacture. Under a Step 2A, Prong 1 analysis, it must be determined whether the claims recite an abstract idea that falls within one or more enumerated categories of patent ineligible subject matter that amounts to a judicial exception to patentability. MPEP §2106.04. Independent Claim 10, the method claim, is selected as being representative of the independent claims in the instant application. Claim 10 recites:
A control method performed by a user terminal used by an author of an item, wherein a plurality of ledger notes provides an electronic bulletin board, and wherein the control method comprises:
acquiring, using a GUI, information regarding a resale royalty right for the item;
acquiring a return rate to be set for the item from the author, according to the information regarding the resale royalty right for the item; and
transmitting an item registration request including the acquired return rate, an object fingerprint of the item and biometric information of the author to a server apparatus,
wherein the item is a tangible object, and
wherein the server apparatus generates an ownership right certificate based on information included in the item registration request, writes on the electronic bulletin board a transaction including the generated ownership right certificate and transmits a transaction ID corresponding to the transaction to the user terminal.
Here, the claims recite the abstract idea, or combination of abstract ideas, of collecting and providing information associated with an item, generating and recording a certificate based on the collected information, providing an indication of where the certificate has been recorded (e.g., via a transaction ID). This concept/abstract idea, which is identified in the bolded sections seen above, falls within the Certain Methods of Organizing Human Activity grouping because it describes a fundamental economic practice (e.g., registering objects of value and receiving documentation of the registration, etc.) and/or a commercial or legal interaction (e.g., registering/recording details/rights about an object of value, etc.). The tying of this concept to a particular environment (e.g., an environment involving an author, an environment that utilizes an electronic bulletin board, etc.) fails to move the claims beyond a general link of the use of the abstract idea in a particular environment. Accordingly, it is determined that the claims recite an abstract idea since they fall within one or more of the three enumerated categories of patent ineligible subject matter. MPEP §2106.04. Furthermore, the Federal Circuit has explained that “the ‘directed to’ inquiry applies a stage-one filter to claims, considered in light of the specification, based on whether ‘their character as a whole is directed to excluded subject matter.’” Enfish, LLC v. Microsoft Corp., 822 F.3d 1327, 1335 (Fed. Cir. 2016) (quoting Internet Patents Corp. v. Active Network, Inc., 790 F .3d 1343, 1346 (Fed. Cir. 2015)). It asks whether the focus of the claims is on a specific improvement in relevant technology or on a process that itself qualifies as an "abstract idea" for which computers are invoked merely as a tool. See id. at 1335-36. Here, it is clear that the claim(s) focus on an abstract idea, and not on any improvement to technology and/or a technical field. It is further noted that, the performance of the one or more process steps using a generic computer component (e.g., a user terminal, a server apparatus, etc.) does not preclude the claim limitation(s) from being in the certain methods of organizing human activity grouping.
Since it is determined that the claim(s) contain a judicial exception, it must then be determined, under Step 2A, Prong 2, whether the judicial exception is integrated into a practical application of the exception. MPEP §2106.04. In order to make this determination, the additional element(s), or combination of elements, are analyzed to determine if the claim as a whole integrates the recited judicial exception into a practical application of that exception. A claim that integrates a judicial exception into a practical application will apply, rely on, or use the judicial exception in a manner that imposes a meaningful limit on the judicial exception, such that the claim is more than a drafting effort designed to monopolize the judicial exception.
As indicated in the “Claim Interpretation” section seen above, the portion of claims 1, 10 and 11 which recites “wherein the item is a tangible object” is non-functional descriptive material as it only describes characteristics about the item. The fact that the item is a tangible object fails affect how any of the positively recited steps are perform. Additionally, the fact that the item is a tangible object fails affect the structure of the system or its components performing the associated step(s). Accordingly, these phrase fail to further limit the claimed invention.
Beyond this non-functional phrase/limitation, claim 10 recites the additional elements of: a user terminal used by an author of an item; a plurality of ledger notes/nodes provides an electronic bulletin board; a GUI; and a server apparatus. Independent claim 1 recites the additional elements of: a user terminal used by an author of an item; a plurality of ledger nodes that provides an electronic bulletin board; a GUI; and a server apparatus. Independent claim 11 recites the additional elements of: a computer mounted on a user terminal used by an author of an item; a plurality of ledger notes/nodes provides an electronic bulletin board; a GUI; and a server apparatus. The user terminal, plurality of ledger notes/nodes, GUI, computer, and server apparatus are all recited at a high-level of generality such that they amount to no more than mere instructions to apply the exception, or a portion thereof, using a generic computer component and/or system. See MPEP 2106.05(f). Examiner finds no indication that the computer component(s) itself/themselves is/are improved, or that there is an improvement to some other technology. Examiner finds no indication in the Specification (See e.g., Specification [0353-0361]), that the operations recited in the independent claims require any specialized computer hardware or other inventive computer components, i.e., a particular machine, invoke any allegedly inventive programming, or that the claimed invention is implemented using other than generic computer components to perform generic computer functions. See DDR Holdings, LLC v. Hotels.com, L.P., 773 F.3d 1245, 1256 (Fed. Cir. 2014) ("[A]fter Alice, there can remain no doubt: recitation of generic computer limitations does not make an otherwise ineligible claim patent-eligible."). They do not transform or reduce a particular article to a different state or thing. They do not apply the abstract idea in a meaningful way beyond merely linking it to a particular technological environment. Therefore, these additional elements do not integrate the abstract idea into a practical application because they do not impose any meaningful limits on practicing the abstract idea. Looking at the elements as a combination does not add anything more than the elements analyzed individually. Examiner further notes that even though the claims may not preempt all forms of the abstraction, this alone, does not make them any less abstract. See OIP Techs., Inc. v. Amazon.com, Inc., 788 F.3d 1359, 1362-63 (Fed. Cir. 2015).
Under the Step 2B analysis, it is determined whether the recited additional elements amount to something “significantly more” than the recited abstract idea to which the claims are directed (i.e., provide an inventive concept). MPEP §2106.05. As discussed above with respect to integration of the abstract idea into a practical application, the additional element(s) of using various computing components (e.g., a user terminal, ledger nodes, a server apparatus, a GUI, etc.) to implement the abstract idea amounts to no more than mere instructions to apply the exception using generic computer components. Mere instructions to apply an exception using generic computer components cannot provide an inventive concept. That is, simply implementing the abstract idea on a generic computer or merely using a computer as a tool to perform an abstract idea cannot integrate a judicial exception into a practical application at Step 2A or provide an inventive concept in Step 2B. Accordingly, taken alone, the additional elements do not amount to significantly more than a judicial exception. Looking at the limitations as an ordered combination adds nothing that is not already present when looking at the elements taken individually.
Therefore, independent claims 1, 10 and 11 are rejected under 35 U.S.C. §101 and are not patent eligible. Dependent claims 3-9 when analyzed are held to be patent ineligible under 35 U.S.C. §101 because the additional recited limitation(s) fail to establish that the claim(s) is/are not directed to an abstract idea. Dependent claim 3 further refines the abstract idea by describing the association of data/information recorded in the certificate. This claim fails to include any new additional elements that integrate the abstract idea into a practical application or provide significantly more than the abstract idea.
Dependent claim 4 further refines the abstract idea by describing what happens to the certificate when an ownership right is sold. This claim fails to include any new additional elements that integrate the abstract idea into a practical application or provide significantly more than the abstract idea.
Dependent claim 5 further refines the abstract idea by describing the type of information collected and placed into the certificate. This claim fails to include any new additional elements that integrate the abstract idea into a practical application or provide significantly more than the abstract idea.
Dependent claim 6 further refines the abstract idea by describing the association of data/information recorded in the certificate. This claim fails to include any new additional elements that integrate the abstract idea into a practical application or provide significantly more than the abstract idea.
Dependent claim 7 recites the additional abstract idea of calculating and distributing payments based on the sale of the item. This abstract idea falls within the Certain Methods of Organizing Human Activity grouping because it describes a fundamental economic practice (e.g., making payments based upon set terms, etc.) and/or a commercial or legal interaction (e.g., making payments based upon terms set in a certificate/contract/agreement). This claim fails to include any additional elements that integrate the abstract idea(s) into a practical application or provide significantly more than the abstract idea(s).
Dependent claim 8 further refines the abstract idea by describing the type of information collected and placed into the certificate. This claim fails to include any new additional elements that integrate the abstract idea into a practical application or provide significantly more than the abstract idea.
Dependent claim 9 further refines the abstract idea by describing an intended use/result of the electronic bulletin board provided by the plurality of ledger nodes. This claim fails to include any new additional elements that integrate the abstract idea into a practical application or provide significantly more than the abstract idea.
In summary, the dependent claims considered both individually and as an ordered combination do not provide meaningful limitations to transform the abstract idea into a patent eligible application of the abstract idea such that the claims amount to significantly more than the abstract idea itself. The claims do not recite an improvement to another technology or technical field, an improvement to the functioning of the computer itself, or provide meaningful limitations beyond generally linking an abstract idea to a particular technological environment. Therefore, the dependent claims are also not patent eligible. Accordingly, it is determined that all claims are directed to non-statutory subject matter under 35 U.S.C. 101 and are ineligible.
Claim Rejections - 35 USC § 103
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.
The factual inquiries set forth in Graham v. John Deere Co., 383 U.S. 1, 148 USPQ 459 (1966), that are applied 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.
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, 3-5 and 9-11 are rejected under 35 U.S.C. 103 as being unpatentable over Shii et al. (US 2021/0382966 A1) (“Shii”) in view of Childress et al. (US 2020/0401677 A1) (“Childress”) in view of Osterer (US 2005/0216360 A1).
Regarding Claims 1, 10 and 11: Shii discloses:
Claim 1: A system comprising:
a user terminal that is used by an author of an item (See at least Shii [0257]; [0262]; Fig. 24. Shii discloses a user terminal (i.e., smartphone) that is used by an author (i.e., creator/artist) of an item (i.e., artwork).);
a plurality of ledger nodes that provides an electronic bulletin board (See at least Shii [0058-0059]; [0154]; [0172]. Shii discloses a plurality of ledger nodes (i.e., nodes) that provides an electronic bulletin board (i.e., records recorded on blocks on a chain).); and
a server apparatus (See at least Shii [0264-0265]; Fig. 21; Fig. 28. Shii discloses a server apparatus (i.e., server).),
Claim 10: A control method performed by a user terminal used by an author of an item, wherein a plurality of ledger notes provides an electronic bulletin board, and wherein the control method comprises (See at least Shii [0058-0059]; [0154]; [0172]; [0257]; [0262]; Fig. 24.):
Claim 11: A non-transitory computer-readable storage medium storing a program executable by a computer mounted on a user terminal used by an author of an item to perform processing, wherein a plurality of ledger notes provides an electronic bulletin board, and wherein the processing comprises (See at least Shii [0058-0059]; [0154]; [0172]; [0257]; [0262]; Fig. 24.):
acquiring, using a GUI, information regarding a resale royalty right for the item (See at least Shii [0068-0069]; [0081]; [0085]; [0128]; Fig. 4; Fig. 8; Fig. 21; Fig. 23. Shii discloses acquiring, using a GUI (e.g., the GUI shown in Fig. 4, the GUI shown in Fig. 23), information regarding a resale royalty right for the item (i.e., information regarding return revenue).);
acquiring a return rate to be set for the item from the author, according to the information regarding the resale royalty right for the item (See at least Shii [0068-0069]; [0085]; [0128-0129]; Fig. 4. Shii discloses acquiring a return rate (i.e., amount to demand, e.g., a percentage of the purchase price, X% Required) to be set for the item (e.g., artwork) from the author (i.e., creator/artist), according to the information regarding the resale royalty right for the item.); and
transmitting an item registration request including the acquired return rate, and an object fingerprint of the item to a server apparatus (See at least Shii [0061-0063]; [0081]; [0087]; [0128-0129]; [0207]; [0216-0220]; [0233-0234]; [0241]; Fig. 21. Shii discloses transmitting an item registration request (i.e., a request to register artwork) including the acquired return rate (i.e., amount to demand, e.g., a percentage of the purchase price, X% Required), and an object fingerprint of the item (i.e., artwork information, e.g., a 2D or 3D image, spectrum data, and other data that are effective in determining authenticity) to a server apparatus (i.e., server).),
wherein the item is a tangible object (See at least Shii [0002]; Fig. 23. Shii discloses wherein the item (i.e., artwork) is a tangible object (e.g., acrylic paint on paper).), and
wherein the server apparatus generates an ownership right certificate based on information included in the item registration request, and writes on the electronic bulletin board a transaction including the generated ownership right certificate (See at least Shii [0060-0064]; [0068-0069]; [0086-0087]; [0101-0104]; [0141]; [0160-0162]; [0207]; Fig. 2; Fig. 4. Shii discloses wherein the server apparatus generates an ownership right certificate (i.e., certificate, e.g., BCN certificate) based on information (e.g., (B) the artwork history information, (C) the artwork ruleset information, (D) the digital art information) included in the item registration request (i.e., included in the request to register artwork), and writes on the electronic bulletin board a transaction including the generated ownership right certificate (i.e., the BCN certificate is issued on the BCN blockchain).).
Shii further discloses that in order to ensure the credibility of the blockchain network (BCN) system, actual individuals and corporations must be linked with personalities on Ethereum (through KYC verification of the Ethereum addresses, for example). Shii [0149]. Shii also indicates that KYC verification (personal identification) of the creator (the artist) can be performed by the entity that operates the BCN. Shii [0150]. However, Shii does not explicitly disclose transmitting biometric information of the author to a server apparatus.
Childress, on the other hand, teaches transmitting biometric information of the author to a server apparatus (See at least Childress [0030-0031]. Childress teaches transmitting biometric information (i.e., biometric data) of the author (i.e., of the owning user) to a server apparatus (i.e., to a computing device, e.g., a management server, a web server, server computing system)).
Therefore, it would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to incorporate the teachings of Childress into Shii’s method of ensuring the credibility of the BCN by utilizing personal identification of the creator/artist. One of ordinary skill in the art would have been motivated to include such features in order to associate an owning user’s biometrics with a corresponding asset in a block added to an asset blockchain (Childress [0030]).
As indicated above, Shii discloses generating an ownership right certificate and writing a transaction including the ownership right certificate to the electronic bulletin board. Shii [0060-0064]; [0068-0069]; [0086-0087]; [0101-0104]; [0141]; [0160-0162]; [0207]; Fig. 2; Fig. 4. Shii also discloses the use of a transaction history acquisition unit that acquires information relating to a transaction history pertaining to an object. Shii [0289]. Shii also discloses the use of a wallet ID to link certificates to a particular user. Shii [0215-0221]. However, Shii does not explicitly disclose wherein the server apparatus transmits a transaction ID corresponding to the transaction to the user terminal.
Osterer, on the other hand, teaches wherein the server apparatus transmits a transaction ID corresponding to the transaction to the user terminal (See at least Osterer Abstract; [0013]; [0024]; Osterer Claim 1. Osterer teaches wherein the server apparatus (i.e., server) transmits a transaction ID (i.e., transaction identification/number) corresponding to the transaction to the user terminal (i.e., to the client computer).).
Therefore, it would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to incorporate the teachings of Osterer into Shii’s method of registering artwork on a blockchain. One of ordinary skill in the art would have been motivated to include such features in order to use the transaction identification number to access uploaded information at a database (e.g., a blockchain) to determine the current owner of the item (Osterer Abstract; [0040]).
Regarding Claim 3: The combination of Shii, Childress and Osterer discloses the system according to claim 1. Shii further discloses wherein, when the server apparatus receives the item registration request, the server apparatus sets the author as an owner of the item and a resale royalty right holder of the item and generates the ownership right certificate that information of the author is set as information of the owner and the resale royalty right holder (See at least Shii [0067-0069]; [0081-0082]; [0128-0129]; Fig. 2. Shii discloses wherein, when the server apparatus receives the item registration request (i.e., a request to register artwork), the server apparatus sets the author (i.e., creator/artist) as an owner of the item (i.e., as the copyright holder of the artwork) and a resale royalty right holder of the item (i.e., the recipient of any return revenue) and generates the ownership right certificate (i.e., BCN certificate) that information of the author is set as information of the owner and the resale royalty right holder.)
Shii differs from the claimed invention, in part, because Shii does not explicitly disclose that the information which is set is biometric information.
Childress, on the other hand, teaches where the information that is set is biometric information (See at least Childress [0010]; [0030-0031]; [0035]. Childress teaches where the information that is set is biometric information (i.e., biometric data) of the author (i.e., of the owning user).).
In view of the teachings provided by Childress it would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to include generat[ing] the ownership right certificate that biometric information of the author is set as biometric information of the owner and the resale royalty right holder into Shii’s method of generating a BCN certificate that identifies the creator/artist as the owner and recipient of any return revenue. One of skill in the art would have been motivated to include such features in order to associate an owning user’s biometrics with a corresponding asset in a block added to an asset blockchain (Childress [0030]).
Regarding Claim 4: The combination of Shii, Childress and Osterer discloses the system according to claim 3. Shii further discloses wherein, when all or part of an ownership right of the author is sold, the server apparatus generates the ownership right certificate including information of a new owner (See at least Shii [0141]; [0229].).
Shii differs from the claimed invention, in part, because Shii does not explicitly disclose that the information which is included is biometric information of a new owner.
Childress, on the other hand, teaches where the information which is included is biometric information of a new owner (See at least Childress [0011]; [0053-0054]. Childress teaches the information which is included is biometric information (i.e., biometric data) of a new owner (i.e., of a second user).).
In view of the teachings provided by Childress it would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to include wherein the server apparatus generates the ownership right certificate including biometric information of a new owner into Shii’s method of generating a BCN certificate that identifies the new owner. One of skill in the art would have been motivated to include such features in order to associate an owning user’s biometrics with a corresponding asset in a block added to an asset blockchain (Childress [0030]).
Regarding Claim 5: The combination of Shii, Childress and Osterer discloses the system according to claim 1. Shii further discloses wherein the user terminal acquires a return rate to be set for the resale royalty right and transmits the item registration request including the return rate to the server apparatus, and wherein the server apparatus generates the ownership right certificate described in the information of a resale royalty right holder and information about the return rate (See at least Shii [0068-0069]; [0081]; [0085]; [0128-0129]; Fig. 4; Fig. 8; Fig. 21; Fig. 23. Shii discloses wherein the user terminal acquires a return rate (i.e., amount to demand, e.g., a percentage of the purchase price, X% Required) to be set for the resale royalty right (i.e., for the return revenue) and transmits the item registration request (i.e., the request to register artwork) including the return rate to the server apparatus, and wherein the server apparatus generates the ownership right certificate (i.e., certificate, e.g., BCN certificate) described in the information of a resale royalty right holder and information about the return rate.)
Shii differs from the claimed invention, in part, because Shii does not explicitly disclose that the information is biometric information.
Childress, on the other hand, teaches where the information is biometric information (See at least Childress [0010]; [0030-0031]; [0035]. Childress teaches where the information is biometric information (i.e., biometric data).).
In view of the teachings provided by Childress it would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to incorporate biometric information into Shii’s generated certificate which comprises an indication of who should receive a return revenue and a percentage associated with the return revenue. One of skill in the art would have been motivated to include such features in order to associate a user’s biometrics with a corresponding asset in a block added to an asset blockchain (Childress [0030]).
Regarding Claim 9: The combination of Shii, Childress and Osterer discloses the system according to claim 1. Shii further discloses wherein the plurality of ledger nodes provides the electronic bulletin board that allows any entity to both append information and read information that is written (See at least Shii [0058-0059]; [0153-0154]; [0172].).
Shii does not explicitly discloses wherein the plurality of ledger nodes provides the electronic bulletin board that does not erase or tamper with information once the information is written. Childress, on the other hand, teaches wherein the plurality of ledger nodes provides the electronic bulletin board that does not erase or tamper with information once the information is written (See at least Childress [0012] “a blockchain structure includes a time-stamped series of immutable records of data that are managed by a cluster of computers not owned by a single entity accessing and
using the blockchain structure”; [0024-0025]; [0051]. Childress discloses wherein the plurality of ledger nodes provides the electronic bulletin board (i.e., ledger) that does not erase or tamper with information once the information is written (i.e., transactions cannot be altered).).
Therefore, it would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to incorporate the teachings of Childress into Shii’s method of using a blockchain to distribute and manage data. One of ordinary skill in the art would have been motivated to include such features in order to ensure that entered data/transactions cannot be altered (Childress [0024]).
Allowable Over the Prior Art
Examiner has performed a thorough search of the prior art based on the claimed subject matter, and is unable to find any references that would reasonably teach the combination of features/elements recited in dependent claim 6.
Shii et al. (US 2021/0382966 A1) discloses acquiring information regarding a resale royalty right for the item (i.e., information regarding return revenue) and acquiring a return rate (i.e., amount to demand, e.g., a percentage of the purchase price, X% Required) to be set for the item (e.g., artwork). Shii [0068-0069]; [0081]; [0085]; [0128]; Fig. 4; Fig. 8; Fig. 21; Fig. 23. Shii indicates that the creator can receive copyright income, income from the sale of ownership, return revenue income from secondary sales, dividends from the sale of a secondary work, and so on. Shii [0236]. Shii further discloses generating a certificate (e.g., a BCN certificate) describing the return revenue rights and associated percentages. Shii [0060-0064]; [0068-0069]; [0086-0087]; [0101-0104]; [0141]; [0160-0162]; [0207]; Fig. 2; Fig. 4. Shii also discloses the issuing of tokens (e.g., BCN tokens, voting rights tokens) in accordance with protocols. Shii [0160-0163]; [0195].
Osterer (US 2005/0216360 A1) also discloses where set amounts are distributed to different entities based upon events (e.g., a change in ownership, a set time period, etc.). Osterer [0044-0045]; [0050-0052].
Accordingly, while certain aspects of claim 6 appear to be known in the art, the prior art, taken either individually or in reasonable combination with other prior art, fails to disclose, suggest, teach, or render obvious the particular combination of steps or elements as recited in claim 6. Claim 6 would be allowable over the prior art if rewritten in independent form including all of the limitations of the base claim and any intervening claims. Claims 7 and 8 are also allowable over the prior art based on their dependency to claim 6.
Examiner notes that the claims would still need to overcome any other outstanding rejections (e.g., 35 U.S.C. 112, 35 U.S.C. 101) before a notice of allowance could be issued.
Response to Arguments
Claim Rejections – 35 U.S.C. § 112(b) Applicant indicates that they have amended claims 1 and 3-11 to resolve the noted issues that resulted in their rejection under 35 USC 112(b) as being indefinite. Examiner agrees. In view of applicant’s amendments, the prior 112(b) rejection is withdrawn.
Claim Rejections – 35 U.S.C. § 103
Applicant indicates that the claimed user terminal is such that in that it transmits the item registration request to the server apparatus, accordingly requesting the server apparatus to generate the ownership right certificate and to write the ownership right certificate on the electronic bulletin board. In addition, the user terminal uses the GUI to acquire the need of setting the resale royalty, the return rate, and sending the acquired the return rate to the server apparatus. Amendment, p. 6. Applicant concludes that they cannot identify this functionality in either Kreuzer or Vos. Id. Applicant’s arguments have been considered but are moot because the new ground of rejection does not rely on any reference applied in the prior rejection of record for any teaching or matter specifically challenged in the argument.
Applicant argues that Kreuzer’s content ID and the claimed fingerprint of the object are different concepts. Amendment, p. 6. Applicant asserts that “Artworks and other items do not have clear IDs written on them, and it is difficult to obtain the ID at the time of transaction. By comparison, object fingerprints have the advantage that they can be obtained with a camera, as the artwork itself is identified.” Id. This argument is unpersuasive. Examiner notes that the claims never indicate what the item comprises. For example, there is no indication that the item is artwork, or an item that lacks an identification number/ID. Likewise, the claim fails to provide any indication what the object fingerprint comprises and/or how the object fingerprint is generated (e.g., with a camera). Under the broadest reasonable interpretation, the object fingerprint is merely an identifier associated with the item, accordingly a content ID would reasonably read on this feature/element.
Conclusion
The prior art made of record and not relied upon is considered pertinent to applicant’s disclosure is cited in the Notice of References Cited (PTO-892). The additional cited art further establishes the state of the art prior to the effective filling date of Applicant’s claimed invention.
Ginter et al. (US 5,892,900) discloses revenue based digital rights management system(s) and method(s).
Ross et al. (US 2021/0110469 A1) discloses a method to securely implement transactions that affect the legal status of a physical object through digital tokenization of the object, may include the steps of: inducting a physical object into a rights management system by acquiring a digital fingerprint of the physical object, creating an associated digital file ("ADF") of the physical object in a secure datastore, and storing the digital fingerprint of the physical object in the ADF, so as to securely and uniquely link the ADF to the physical object in an unspoofable manner; initializing a digital ledger stored in or linked to the ADF; generating data comprising at least one ownership token representing initial ownership of the physical object; storing the digital token data in the ledger so that the digital token data is thereby securely and uniquely linked to the physical object. Ross [0010].
Moss-Pultz et al. (US 2021/0201310 A1) discloses a decentralized property system and method allow ownership rights to be transferred directly from one party to another without requiring a central authority to operate or secure the system. Moss-Pultz Abstract; [0002]; [0017].
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/J.F./Examiner, Art Unit 3698 September 17, 2025
/PATRICK MCATEE/Supervisory Patent Examiner, Art Unit 3698