FINAL REJECTION
Introduction
This Office action is responsive to the communications filed August 28,2025. Claims 1, 5-9 and 12-15 were amended. Claims 1-15 are pending.
Response to Arguments
Applicant's arguments filed August 28, 2025 have been fully considered but they are not persuasive.
Applicant has amended the claims, thereby the claim objection has been withdrawn.
Applicant has amended claims 6 and 13 to overcome the 35 U.S.C. 112 (a) rejection.
As for the objection to the specification for failing to provide proper antecedent basis to the claimed subject matter in claim 1, Applicant did not address this issue. Therefore, this objection is maintained.
Applicant asserts that the claims are not “directed to abstract mathematics, but instead to a practical application that improves the functioning of computer systems by securing digital assets against tampering and fraudulent use.” Applicant states that “[e]mbedding a watermark in a digital file or other asset and binding it to a cryptographically secured asset…produces a file that is tamper-resistant, verifiable, and uniquely linked to its blockchain representation.”
However, the Examiner respectfully disagrees. For instance, claim 1 recites “embed a unique watermark on the generated copy of received digital asset using a watermarking algorithm…generating a cryptographically secured asset representing the encrypted generated copy of received digital asset embedded with the unique watermark, wherein the cryptographically a secured asset comprises the hash value obtained from the generated copy of received digital asset embedded with the unique watermark.” As exemplified in the claim, Applicant is “using a watermarking algorithm” to perform the embedding feature, which suggest “mere instructions to apply an exception, because they do no more than merely invoke computers or machinery as a tool to perform an existing process.” It is generally linking the use of the judicial exception to a particular technological environment or field of use. MPEP 2106.05(f) (h). The claims and specification do not recite the particulars of the watermarking algorithm being used to implement the features.
Applicant asserts that “Bertsch does not teach embedding a watermark into a digital file prior to hashing.” Applicant states that the reference “does not teach watermarking a digital file and then using that file as input to a hashing algorithm, but rather only teaches that a watermark can be added to the output hash created by that algorithm.”
In response to applicant's arguments against the references individually, 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).
Particularly, Dehaeck discloses “embed a unique watermark on the generated copy of received digital asset using a watermarking algorithm” at paragraph [0031], which states a visible and/or an imperceptible digital watermark can be applied to digital artwork making the digital artwork unique. Dehaeck also teaches that whatever changes is made to a block on the blockchain would impact that block’s hash (paragraph [0038]).
Bertsch teaches producing a hash value from an authenticated representation of the image file along with the image and object metadata. Applying the hashing of Bertsch to digital artwork of Dehaeck, which includes a digital watermark yields predictable results. Doing so, would protect the digital asset from unauthorized use (Bertsch at col. 1, ll. 40-43).
Specification
The specification is objected to as failing to provide proper antecedent basis for the claimed subject matter in claim 1. Particularly, the specification does not describe a processor. See 37 CFR 1.75(d)(1) and MPEP § 608.01(o).
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 1-15 are rejected under 35 U.S.C. 101 because the claimed invention is directed to a judicial exception (i.e. law of nature, a natural phenomenon, or an abstract idea) without significantly more. Independent claim 1 recite “receive a digital asset; generate a copy of received digital asset; embed a unique watermark on the generated copy of received digital asset using a watermarking algorithm; obtain a hash value of the generated copy of received digital asset embedded with the unique watermark using a hashing algorithm; encrypt the generated copy of received digital asset embedded with the unique watermark using an encryption algorithm, and; generate a cryptographically secured asset representing the encrypted generated copy of received digital asset embedded with the unique watermark, wherein the cryptographically secured asset comprises the hash value obtained from the generated copy of received digital asset embedded with the unique watermark.” Independent claim 9 recites similar language.
Dependent claims 2-8 and 10-15 recite elements such as the digital asset is a representation of a physical asset, a non-fungible token, decrypting the received encrypted copy of the digital asset, comparing the obtained hash, registering the assets.
Hence, the claims are directed to the abstract idea of generating cryptographically secured asset using mathematical relationships. Under the broadest reasonable interpretation, the claims are directed to an abstract idea that is categorized under the mathematical concepts grouping. MPEP 2106.04(a)(2).
The claims recite the following additional elements: “one or more hardware processors.” Applicant’s claims utilize the processors to perform the steps. The specification of the present invention states the following:
In the abstract:
The present invention, in some embodiments thereof, relates to digital and physical assets security and, more specifically, but not exclusively, to systems and methods for registration, validation, and distribution of assets digitally. The invention describes a system and method to establish an asset management system that registers, hosts, and validates submitted digital assets or digital representations of physical assets using cryptographically secured assets, such as digital non-fungible tokens (NFTs).
Paragraph [0007]:
The following summary is an explanation of some of the general inventive steps for the system, method, architecture and apparatus in the description. This summary is not an extensive overview of the invention and does not intend to limit the scope beyond what is described and claimed as a summary.
However, the claims do not include additional elements that are significantly more than the judicial exception because the additional elements or combination of elements in the claims, other than the abstract idea per se, amount to no more than recitation of generic components that serves to perform generic functions. These functions are well-understood, routine, and conventional activities previously known to the pertinent industry. Further, it is old and well known to receive a digital asset, generate a copy of received digital asset, embed a unique watermark on the generated copy, obtain a hash value, encrypt the generated copy, and generate a cryptographically secured asset. See RecogniCorp, LLC v. Nintendo Co., 855 F.3d 1322, 1328, 122 USPQ2d 1377, 1381 (Fed. Cir. 2017) (encoding and decoding image data), Digitech Image Techs., LLC v. Elecs. for Imaging, Inc., 758 F.3d 1344, 1344, 1351 (Fed. Cir. 2014) (a process that employs mathematical algorithms to manipulate existing information to generate additional information is not patent eligible).
Moreover, the limitations generically, referring to manipulating information using mathematical relationships do not constitute significantly more because they are simply an attempt to limit the abstract idea to a particular technological environment. Viewed as a whole, these additional claim elements 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.
Claim Rejections - 35 USC § 103
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, 6, 9,10, and 13 are rejected under 35 U.S.C. 103 as being unpatentable over U.S. Patent No. 2017/0243179 to Dehaeck et al. (“Dehaeck”) in view of U.S. Publication No. 10565358 to Bertsch et al. (“Bertsch”).
As per claim 1, Dehaeck discloses receive a digital asset (paragraph [0031] -the registered artist or his/her representative 121 uploads the digital artwork to the patron edition system server 102 as in step 210. For authentication purpose the patron edition system may provide a transfer key to the user before uploading the digital artwork or, alternatively, the artwork can be authenticated after uploading the digital artwork file to the patron edition system server 10); generate a copy of received digital asset(paragraph [0031] - The patron edition system server 102 associates the digital artwork with the artist 121 and stores the file in the data store 112 as in step 212 as a lossless archival copy, one or more patron edition copies and an exhibition copy/a web stream copy or a sharing copy. In some embodiments, a visible and/or an imperceptible digital watermark can be applied to a digital artwork making the digital artwork unique.); embed a unique watermark on the generated copy of received digital asset using a watermarking algorithm (paragraph [0031]-a visible and/or an imperceptible digital watermark can be applied to a digital artwork making the digital artwork unique);
Dehaeck discloses using blockchain technology and changes made to the block would change that block’s hash (paragraph [0038]). However, the reference does not expressly disclose obtain a hash value of the generated copy of received digital asset embedded with the unique watermark using a hashing algorithm; encrypt the generated copy of received digital asset embedded with the unique watermark using an encryption algorithm, and; generate a cryptographically secured asset representing the encrypted generated copy of received digital asset embedded with the unique watermark, wherein the cryptographically secured asset comprises the hash value obtained from the generated copy of received digital asset embedded with the unique watermark.
Bertsch discloses obtain a hash value of the generated copy of received digital asset embedded with the unique watermark using a hashing algorithm, encrypt the generated copy of received digital asset embedded with the unique watermark using an encryption algorithm; and generate a cryptographically secured asset representing the encrypted generated copy of received digital asset embedded with the unique watermark, wherein the cryptographically secured asset comprises the hash value obtained from the generated copy of received digital asset embedded with the unique watermark. (col. 4, ll. 32-53 – for each master image file, a cryptographic hash is generated of the image, the image metadata, and the object metadata. The cryptographic hash can be generated of the image, the image metadata, and the object data altogether. This may be performed by the has unit which encrypts information items that uniquely identify an image into a hash value that uniquely identifies the image and information items about the image… the hash unit may produce a hash value from the authenticated representation of the image file along with the image and object metadata).
It would have been obvious to one of ordinary skill in the art before the effective filing date of the invention to modify Dehaeck by including the features of Bertsch because doing so would protect the digital asset from unauthorized use (Bertsch at col. 1, ll. 40-43). Applying the known technique of Bertsch into the system of Dehaeck would have been recognized by those of ordinary skill in the art as resulting in an improved system that would have yielded predictable results.
As per claim 2, Bertsch discloses wherein the cryptographically secured asset comprises the cryptographic hash value obtained from the generated copy of received digital asset embedded with the unique watermark. See col. 4, ll. 32-53.
As per claim 3, Bertsch discloses wherein the digital asset is a representation of a physical asset (see col. 5, ll. 18-23 – a derivative image product can be a digital image based on the image…an image product can also be a physical print).
As per claim 6, Dehaeck discloses generate and register a plurality of cryptographically secured assets on a blockchain, each cryptographically secured asset representing an encrypted unique modified copy of the digital asset embedded with a unique watermark (paragraphs [0014]- [t]he system records the chain of title in a blockchain based ledger for a digital artwork edition upon sale and/or a resale of the digital edition to ensure ownership authenticity of the digital artwork as an embedded part of the work; [0038]- In a preferred embodiment, blockchain technology is used for recording the chain of titles which creates a chain where any changes made to a block will change that block's hash, which must be recomputed and stored in the next block; also see claim 1 above.)
Claim 9 is rejected on the same rationale as claim 1 above.
Claims 10 is rejected on the same rationale as claim 3 above.
Claim 13 is rejected on the same rationale as claim 6 above.
Claims 4 and 11 are rejected under 35 U.S.C. 103 as being unpatentable over Dehaeck”) and Bertsch as applied to claims 1 and 9, respectively, above and further in view of U.S. Patent No. 11,757,653 to Thacker et al. (“Thacker”).
As per claim 4, Dehaeck discloses the digital asset. Dehaeck does not expressly disclose the digital asset is a non-fungible token registered on a blockchain. Thacker discloses the digital asset is a non-fungible token registered on a blockchain (abstract – systems and methods for determining authenticity of non-fungible digital assets are discloses; col. 4, ll. 24-42 – ledgers, such as distributed ledger 111, may provide and/or produce a secure record or registry of ownership of assets…a blockchain is a type of ledger…that stores a registry of assets and transactions).
It would have been obvious to one of ordinary skill in the art before the effective filing date of the invention to modify Dehaeck and Bertsch by including the features of Thacker because non-fungible tokens are unique, which may prevent fraud. Applying the known technique of Thacker into the system of Bertsch and Dehaeck would have been recognized by those of ordinary skill in the art as resulting in an improved system that would have yielded predictable results.
Claim 11 is rejected on the same rationale as claim 4 above.
Claims 5, 7, 8, 12, 14, and 15 is rejected under 35 U.S.C. 103 as being unpatentable over Dehaeck”) and Bertsch as applied to claims 1 and 9 above and further in view of U.S. Publication No. 2022/0311611 to Gauer et al. (“Gauer”).
As per claim 5, Dehaeck discloses receive an encrypted copy of a digital asset embedded with a unique watermark (paragraph [0014]- The system provides a secured environment for trading of digital artwork including loaning/renting of the artwork through encryption of the digital artwork). Dehaeck does not expressly disclose decrypt the received encrypted copy of a digital asset embedded with a unique watermark using a decryption algorithm; obtain a hash value from the decrypted copy of a digital asset embedded with a unique watermark using the hashing algorithm; compare the obtained hash value with the hash value of the corresponding cryptographically secured asset registered on a blockchain to assert the validity and/or ownership. Bertsch discloses hashing, watermarking, encrypting, and decrypting (see claim 1 above). Gauer discloses decrypt the received encrypted copy of a digital asset embedded with a unique watermark using a decryption algorithm; obtain a hash value from the decrypted copy of a digital asset embedded with a unique watermark using the hashing algorithm; compare the obtained hash value with the hash value of the corresponding cryptographically secured asset registered on a blockchain to assert the validity and/or ownership (paragraphs [0108] – the digital content of each block may be accessed by decrypting each block in the blockchain, and the hash value of each block may be used as a basis to reference a previous block; [0146] – computers that store these blocks regularly compare their has values to ensure that they are all in agreement). It would have been obvious to one of ordinary skill in the art before the effective filing date of the invention to modify Dehaeck and Bertsch by including the features of Gaur in order to prevent unauthorized usage of the digital asset. Applying the known technique of Gaur into the system of Bertsch and Dehaeck would have been recognized by those of ordinary skill in the art as resulting in an improved system that would have yielded predictable results.
As per claim 7, Dehaeck and Bertsch in view of Gauer disclose receive an encrypted copy of a digital asset embedded with a first unique watermark; decrypt the received encrypted copy of a digital asset embedded with the first unique watermark using a decryption algorithm; embed a second unique watermark on the decrypted copy of a digital asset embedded with the first unique watermark using a watermarking algorithm; obtain a hash value from the decrypted copy of a digital asset embedded with the first and second unique watermark using the hashing algorithm; encrypt the decrypted copy of a digital asset embedded with the first and second unique watermarks using an encryption algorithm, and; generate a cryptographically secured asset representing the encrypted decrypted copy of a digital asset embedded with the first and second unique watermarks. See claims 1 and 5 above. As for using a second unique watermark, it would have been obvious to try, by one of ordinary skill in the art, at the time of the invention was made to perform the steps taught by Dehaeck and Bertsch in view of Gauer using a second unique watermark.
As per claim 8, Dehaeck and Bertsch in view of Gauer disclose receive an encrypted decrypted copy of a digital asset embedded with the first and second unique watermarks; decrypt the received encrypted decrypted copy of a digital asset embedded with the first and second unique watermarks using a decryption algorithm; obtain a hash value from the decrypted encrypted decrypted copy of a digital asset embedded with the first and second unique watermarks using the hashing algorithm; compare the obtained hash value with the hash value of a corresponding non-fungible token registered on the blockchain to assert validity and/or ownership. See claims 1 and 5 above. s for using a second unique watermark, it would have been obvious to try, by one of ordinary skill in the art, at the time of the invention was made to perform the steps taught by Dehaeck and Bertsch in view of Gauer using a second unique watermark.
Claim 12, 14, and 15 are rejected on the same rationale as claims 5, 7, and 8, respectively.
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 JALATEE WORJLOH whose telephone number is (571)272-6714. The examiner can normally be reached Monday-Friday 6:00am-2:00pm.
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 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.
/Jalatee Worjloh/Primary Examiner, Art Unit 3697