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 .
Acknowledgments
This Action is in response to the amendment filed on July 13, 2025. Claims 1-8, 10-15, and 17-20 are currently pending and have been fully examined. Claims 9 and 16 have been cancelled by Applicant.
Response to Arguments
With respect to objection to the Specification, the amendment is entered and the objection is withdrawn.
With respect to the claim objections, the amendment resoles the issues and the objections are withdrawn.
With respect to the 101 rejection, Applicant argues that the amended claims recite additional elements that are significantly more than the mere automation. However, Applicant does not mention what the additional elements are. Applicant further argues that “the amended claims 1 and 11 are directed to a system and method that a) uniquely identify a physical asset by creating a corresponding immutable digital surrogate on a secured distributed ledger, b) validate the physical asset based on the immutable digital surrogate and the physical asset identifiers, viz., physical cloneable functions (PCF) and physical unclonable function (PUF), and c) facilitate secured transfer of the physical asset and the corresponding immutable digital surrogate.”
The examiner respectfully disagrees and notes that the items (a to c) named by Applicant describe creating a digital equivalent (i.e. surrogate) for a physical item, associating attributes of the physical asset to the digital surrogate and using the digital surrogate to validate the real-world asset, which describes an abstract idea.
Applicant further argues that the amended claims envisage a three-way relationship between a first owner of a physical asset, an immutable digital surrogate created on a secured ledger as a digital equivalent of the physical asset, and the physical asset identifiers, and that the three-way relationship is not inherent to the physical asset and is not a “natural relationship.”
The examiner respectfully notes that relationship between an entity and digital attributes associated with the entity is not natural, but not being natural is not sufficient to make a relationship eligible under 101. In addition, the fact that the digital equivalent is stored on a distributed ledger does not overcome the rejection because the distributed ledger is merely a tool for storing the digital equivalent of the physical asset.
Applicant further argues that it takes a specialized computer processor (and not a generic computer) to perform the claimed functions. The examiner respectfully disagrees and notes that the Applicant’s claims and specification do not provide any details on the specialized computer processor. However, even if a specialized processor was provided, the additional elements do not involve improvements to the functioning of a computer, or to any other technology or technical field, and the claims do not apply or use the abstract idea in some other meaningful way beyond generally linking the use of the abstract idea to a particular technological environment.
Applicant, on pages 17-19 provides further arguments regarding the claimed mapping between identifiers, transforming identifiers into a digital surrogate, creating item-ID based on PUF-based and PCF-based identifiers, improving the manner a physical asset is validated, that merely describe claims as defining relationships between various data item, which is still directed to the abstract idea. Applicant refers to the PUF-based and PCF-based identifiers as “additional elements,” that transform the abstract idea. The examiner notes that identifiers are data and data is not an additional element that incorporate abstract idea into a practical application. Applicant also argues that a “hitherto unknown” relationship between NFT-based identifier, PCF-based identifier and PUF-based identifier and “hitherto unknown” transformation of the combination of the identifiers into an immutable digital surrogate “should not be grouped within certain methods of organizing human activity.”
The examiner respectfully disagrees and notes that the relationship and transformation between the identifiers named by Applicant are merely performed by mapping the identifiers via a ledger record (see, for example paragraph [0029], [0038] in the Specification.) The examiner further notes that mapping between several associated identifiers can be performed by recording the corresponding identifier in a table, using pen and paper, and therefore represents an abstract idea and using an immutable ledger is merely a tool for recording the relationship.
With respect to claim interpretation under 112(f) the amendment caused claim components to not invoke 112(f).
With respect to the 112(a) and 112(b) rejections, the amendment overcomes the rejections but new issues arise.
With respect to the 103 rejections, Applicant argues that Berti and/or Cella et al., in cited portions, do not explicitly disclose a non-fungible token (NFT)-based identifier, a physical cloneable function (PCF)-based identifier, and a physical unclonable function (PUF)-based identifier and that Berti stops short of disclosing “a) the specific use of the non-fungible token (NFT)-based identifier, the physical cloneable function (PCF)-based identifier, and the physical unclonable function (PUF)-based identifier; and b) the creation of a digital surrogate by mapping the non-fungible token (NFT)- based identifier to at least one of the physical cloneable function (PCF)-based identifier and the physical unclonable function (PUF)-based identifier.”
The examiner respectfully disagrees and notes that the “non-fungible token (NFT)-based identifier,” “physical cloneable function (PCF)-based identifier,” and “ physical unclonable function (PUF)-based identifier,” are merely names assigned to identifiers associated with an asset, while the identifiers are treated same as any other identifier without any “NFT-based” “PCF-based” or “PUF-based” features being associated with the identifiers and being used by any claimed functions. . In addition, Applicants claim recites creating a digital surrogate by “mapping the NFT-based identifier to at least one of PCF and PUF.” Therefore, the claim recitation is interpreted as at least two identifiers are mapped to each other. Similarly, Berti in cited portions teaches a digital twin (i.e., digital surrogate) is created in a blockchain: [0075]-[0081] using a unique physical asset identifier (i.e., PCF or PUF) that is linked (i.e. mapped) to the digital twin: [0078], digital twin is stored on a blockchain (i.e. immutable digital surrogate): [0060] blockchain repository is non-repudiable (immutable): [0114])
Applicant further argues that the claimed digital surrogate is accessible only to the first owner of the physical asset and Berti fails to teach such a digital surrogate. The examiner respectfully disagrees and notes that according to claim 1, the ownership of a digital surrogate is transferred to track changes in ownership of a physical asset. Similarly, Berti teaches changing ownership of digital twins.
Applicant further argues that the cited art fail to teach an item-ID that is a combination of the physical cloneable function (PCF)-based identifier and the physical unclonable function (PUF)-based identifier, and an immutable item-metadata TLV structure. The examiner respectfully notes that the claim recitations describing the structure of the item-ID and the TLV, merely describe data that has not been further used by any claim functions and therefore indicate non-functional descriptive material that does not further limit the scope of the claim.
The examiner notes that further Applicant arguments are moot in light of new grounds of rejection.
Claim Objections
Wherein clauses are considered part of their previous phrase and should precede with a comma (“,”) In claim 1, the following corrections need to be made:
“…NFT-based hard identifier via an immutable ledger record[[;]] , wherein the step of creating the immutable digital surrogate, comprises…”
“i. initiating a parameter collection, wherein…”
“iii. receiving a response from the distributed ledger network, wherein…”
“…using the owner-ID as the smart contract on the secure distributed ledger, wherein…”
Claims 1 and 11 recite “…mapping an NFT (Non-Fungible Token)-based hard identifier to at least one of a physical cloneable function (PCF)-based identifier(s), and a physical unclonable function (PUF)-based identifier(s) (emphasis added) The examiner notes that while “a” identifies a singular noun (item) the “(s)” identifies plurals. Therefore, the combination “a…identifier(s)” is grammatically incorrect. It should be replaced with either "a…identifier” or “…identifiers.”
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 1-8, 10-15 and 17-20 are rejected under 35 U.S.C. 101 because the claimed invention is directed to a judicial exception (i.e., a law of nature, a natural phenomenon, or an abstract idea) without significantly more.
Claims 1-8 and 10 are directed to a method (process) and claims 11-15 and 17-20 are directed to a system (product). Therefore, these claims fall within the four statutory categories of invention.
Claims 1-8, 10-15 and 17-20 are directed to the abstract idea of creating and recording a digital surrogate for a physical asset. The claims do not include additional elements that are sufficient to amount to significantly more than the judicial exception.
Analysis
In the following analysis, bolded text indicates abstract idea and the rest of the text indicates additional elements. Independent claims 1 and 11 recite:
a. identifying and tracing the physical real-world asset in a secure distributed ledger accessible via a distributed ledger network, by using the immutable digital surrogate;
b. creating the immutable digital surrogate for the physical real-world asset in the secure distributed ledger, by mapping an NFT (Non-Fungible Token)-based hard identifier to at least one of a physical cloneable function (PCF)-based identifier(s), and a physical unclonable function (PUF)-based identifier(s) configured to identify the physical real-world asset, and wherein the immutable digital surrogate is created only for the physical real-world asset and is owned by a first owner of the physical real-world asset, and wherein the PUF-based identifiers and PCF-based identifiers are mapped to the NFT-based hard identifier via an immutable ledger record;
wherein the step of creating the immutable digital surrogate, comprises the following steps:
i. initiating a parameter collection wherein the parameter collection includes collecting a specification prose and a discretionary prose, and
the specification prose includes an immutable item-ID and an immutable item-metadata TLV (type-length-value) structure, and the item-ID is a combination of the PUF-based identifier and the PCF-based identifier, and the item-metadata TLV structure includes at least one of a photo 3D model, and description of the physical real-world asset; and
the discretionary prose includes an owner-ID, a mutable TLV structure, a three-way mutable TLV structure, and an immutable TLV structure;
ii. sending a query corresponding to the specification prose to the distributed ledger network, said query including the item-ID;
iii. receiving a response from the distributed ledger network wherein the response includes an error message to an event when the item-ID is bound to an other immutable digital surrogate, and if the item-ID is not bound to the other immutable digital surrogate, an owner address with the owner-ID is associated to the item-ID;
iv. initiating creation of a smart contract based on the owner-ID, and wherein the smart contract automatically executes, controls, and documents events and actions performed on the immutable digital surrogate mapped to the owner-ID, according to terms specified in the smart contract;
v. releasing a token ID and acknowledging creation of the immutable digital surrogate;
c. differentiating the physical real-world asset from a counterfeit real-world asset, by using a digital immutable surrogate mapped to the physical real-world asset through at least one of the PUF based identifiers and PCF-based identifiers;
d. associating ownership of the immutable digital surrogate to the owner-ID, using the owner-ID as the smart contract on the secure distributed ledger wherein the immutable digital surrogate is accessible only by the first owner of the physical real-world asset;
e. transferring the ownership of the immutable digital surrogate to track changes in ownership of the physical real-world asset and a transfer of the ownership of the immutable digital surrogate is performed in line with sale of the original physical real-world asset, thereby ensuring traceability and authenticity of the ownership of the physical real-world asset;
f. validating an identity of the physical real-world asset, by comparing the physical real-world asset with the smart contract in the secure distributed ledge; and
g. enabling first-time owners to associate specific immutable records, including messages, labels, or names to the immutable digital surrogate.
Therefore, claims 1 and 11 are directed to the abstract idea of creating and recording a digital surrogate for a physical asset, which is a “fundamental economic principle or practice” and “a commercial or legal interaction,” grouped within the “certain methods of organizing human activity” grouping of abstract ideas in prong one of step 2A of the Alice/Mayo test (See MPEP 2106) because the claims involve a series of steps for creating and recording a digital surrogate for a physical asset. Accordingly, the claims recite an abstract idea (See pages 7, 10, Alice Corporation Pty. Ltd. v. CLS Bank International, et al., US Supreme Court, No. 13-298, June 19, 2014; MPEP 2106).
This judicial exception is not integrated into a practical application because, when analyzed under prong two of step 2A of the Alice/Mayo test (See MPEP 2106), the additional elements of a secure distributed ledger, an NFT, an immutable ledger record, a distributed ledger network, a computer implemented system, a processor, a physical real-world asset, merely use one or more computers as tools to perform the abstract idea. The use of a secure distributed ledger, an NFT, an immutable ledger record, a distributed ledger network, a computer implemented system, a processor and a physical real-world asset, does not integrate the abstract idea into a practical application because it requires no more than one or more computing devices performing functions that correspond to acts required to carry out the abstract idea. The additional elements do not involve improvements to the functioning of a computer, or to any other technology or technical field (MPEP 2106.05(a)), and the claims do not apply or use the abstract idea in some other meaningful way beyond generally linking the use of the abstract idea to a particular technological environment, such that the claim as a whole is more than a drafting effort designed to monopolize the exception (MPEP 2106.05(e) and Vanda Memo). Therefore, the claims do not, for example, purport to improve the functioning of a computer. Nor do they effect an improvement in any other technology or technical field. Accordingly, the additional elements do not impose any meaningful limits on practicing the abstract idea, and the claims are directed to an abstract idea.
The claims do not include additional elements that are sufficient to amount to significantly more than the judicial exception because, when analyzed under step 2B of the Alice/Mayo test (See MPEP 2106), the additional elements amount to no more than using computing devices or processors to automate and/or implement the abstract idea.
As discussed above, taking the claim elements separately, these additional elements perform the steps or functions that correspond to the actions required to perform the abstract idea. Viewed as a whole, the combination of elements recited in the claims merely recite the abstract idea.
Dependent claims 2 and 12 recite:
wherein the specification prose includes a factual attribute(s) of the physical real-world asset, wherein the specification prose is immutable and identifies the physical real-world asset through the factual attributes thereof, and wherein the discretionary prose includes attributes elected at discretion of the first owner and wherein the mutable TLV structure each of the type, the length, and the value is muted by a current owner or a future owner of the immutable digital surrogate, and wherein in the three-way mutable TLV structure, each of the type, the length, and the value is muted by the current owner or the future owner only with approval from the first owner, and wherein in the immutable TLV structure, each of the type, the length, and the value is set by the first owner and is not altered or deleted by the current owner or the future owner.
which further describe the abstract idea. The claim does not recite any new additional elements for consideration under step 2A, prong 2 or Step 2B, and therefore is ineligible.
Dependent claims 3 and 13 recite:
using a mapping between the digital surrogate and the original physical real-world asset to verify an authenticity of the original physical real-world asset during a purchase transaction and to identify the counterfeit real-world asset prior to finalizing a the purchase transaction,
which further describe the abstract idea. The claim does not recite any new additional elements for consideration under step 2A, prong 2 or Step 2B, and therefore is ineligible.
Dependent claims 4 and 14 recite:
wherein when the original physical real-world asset is sold by the current owner to a new owner, the ownership of the immutable digital surrogate is also transferred to the new owner, and wherein transfer of the ownership of the immutable digital surrogate to the new owner mutates the current owner of the original physical real-world asset, without affecting the immutable records linked to the first owner of the original physical real-world asset and without deleting prior ownership records of the original physical real-world asset,
which further describe the abstract idea. The claim does not recite any new additional elements for consideration under step 2A, prong 2 or Step 2B, and therefore is ineligible.
Dependent claims 5 and 17 recite:
retaining registered immutable digital surrogates representative of corresponding original physical real-world assets for validation and transfer of the ownership of the corresponding original physical real-world assets,
which further describe the abstract idea. The claim does not recite any new additional elements for consideration under step 2A, prong 2 or Step 2B, and therefore is ineligible.
Dependent claims 6 and 18 recite:
enabling the current owner of the original physical real-world asset, a potential buyer, a manufacturer, and law enforcement agencies to look up an existence of the immutable digital surrogate associated with the original physical real-world asset, by querying for the original physical real-world asset, the PUF-based identifier and the PCF-based identifier to establish originality and the ownership of the original physical real-world asset.
which further describe the abstract idea. The claim does not recite any new additional elements for consideration under step 2A, prong 2 or Step 2B, and therefore is ineligible.
Dependent claims 7 and 19 recite:
wherein associating the immutable records to the immutable digital surrogate enables the first owner of the original physical real-world asset to provide identification information necessary for creating the immutable digital surrogate along with a validation of originality of the original physical real-world asset by a certifying body.
which further describe the abstract idea. The claim does not recite any new additional elements for consideration under step 2A, prong 2 or Step 2B, and therefore is ineligible.
Dependent claims 8 and 15 recite:
wherein the changes in the ownership of the original physical real-world asset are validated via changes in the ownership of the immutable digital surrogate, and wherein the changes in the ownership of the original physical real-world asset is associated with the changes in the ownership of the immutable digital surrogate in an immutable form on the secure distributed ledger.
which further describe the abstract idea. The claim does not recite any new additional elements for consideration under step 2A, prong 2 or Step 2B, and therefore is ineligible.
Dependent claims 10 and 20 recite:
modifying mutable records associated with an ownership record of the original physical real-world asset, based on immutable constraints populated by different owners identified along an ownership chain of the original physical real-world asset.
which further describe the abstract idea. The claim does not recite any new additional elements for consideration under step 2A, prong 2 or Step 2B, and therefore is ineligible.
Therefore, the claims recite abstract idea and do not include any additional elements to amount to significantly more than the judicial exception.
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.
The following is a quotation of 35 U.S.C. 112 (pre-AIA ), second paragraph:
The specification shall conclude with one or more claims particularly pointing out and distinctly claiming the subject matter which the applicant regards as his invention.
Claims 1-8, 10-15, and 17-20 are rejected under 35 U.S.C. 112(b) or 35 U.S.C. 112 (pre-AIA ), second paragraph, as being indefinite for failing to particularly point out and distinctly claim the subject matter which the inventor or a joint inventor (or for applications subject to pre-AIA 35 U.S.C. 112, the applicant), regards as the invention.
With respect to claim 1, the claim recites, “a. identifying and tracing the physical real-world asset in a secure distributed ledger accessible via a distributed ledger network, by using the immutable digital surrogate.” The claim further recites “b. creating the immutable digital surrogate…” The first claim recitation indicates that an immutable digital surrogate already exists and is used for identifying a physical real-world asset.” However, according to the second claim recitation the immutable digital surrogate is being created and therefore it does not exist yet. This makes the scope of the claim unclear because it is not clear whether the immutable digital surrogate already exists or does not exist and is being created. Therefore, the scope of each claim is unclear and one of ordinary skill in the art would not be reasonably appraised of the scope of the claim. For the purpose of examination the claim recitations are interpreted such that the “creating” step is performed prior to “identifying” step and the digital surrogate is created prior to being used.
With respect to claim 1, the claim recites, in the preamble: “…identifying, validating, and transferring a physical real-world asset using an immutable digital surrogate…” The claim further describes steps for creating “the immutable digital surrogate.” However, the claim further recites: “differentiating the physical real-world asset from a counterfeit real-world asset, by using a digital immutable surrogate.” (emphasis added) This makes the scope of the claim unclear because it is not clear whether “a digital immutable surrogate” used of “differentiating” is same as the “immutable digital surrogate,” that was created in prior steps of the claim or a new surrogate. Therefore, the scope of each claim is unclear and one of ordinary skill in the art would not be reasonably appraised of the scope of the claim.
With respect to claims 1 and 11, the claim recites: “initiating creation of a smart contract based on the owner-ID…” The claim further recites: “associating ownership of the immutable digital surrogate to the owner-ID, using the owner-ID as the smart contract…” The first claim recitation implies that an owner-ID is used for creating a smart contract. However, the second recitation implies that the owner-ID itself is used as the smart contract.” It is not clear how an owner-ID is used as a smart contract, because an owner-ID is merely an identifier while a smart contract is an executable code. Therefore, the scope of the claim is unclear and one of ordinary skill in the art would not be reasonably appraised of the scope of the claim.
With respect to claims 1 and 11, the claim limitations “smart contract… automatically execute, control, and document events and actions …” This makes the scope of the claim unclear because although functions “executing” and “documenting” are known by one of ordinary skill ion the art, the function “controlling” is unclear and it is not understood from the claim recitation that what is performed by the smart contract when “controlling” events and actions. Therefore, the scope of the claim is unclear and one of ordinary skill in the art would not be reasonably appraised of the scope of the claim.
With respect to claim 1, the amended claim recites: “ …wherein the response includes an error message to an event when the item-ID is bound to an other immutable digital surrogate…” This makes the scope of the claim unclear because it is not clear whether “an other immutable digital surrogate” implies that the item-ID is bound to multiple immutable digital surrogates, and if that is the case, what other digital surrogates are bound to the item-ID. Therefore, the scope of the claim is unclear and one of ordinary skill in the art would not be reasonably appraised of the scope of the claim.
In addition, in the claim recitation “if the item-ID is not bound to the other immutable digital surrogate,” there is insufficient antecedent basis for “the other immutable digital surrogate,” because if the item-ID is not bound to “any” digital surrogates, “the other digital surrogate” does not exist.
With respect to claims 1, 3-8 and 10, each claim recites, “…the original physical real-world asset.” There is insufficient antecedent basis for “the original physical real-asset” in the claim.
With respect to claim 11, the amended claim recites: “cause said processor to…send a digital surrogate creation request to a secure distributed ledger …,” and “create an immutable digital surrogate on the secure distributed ledger…” This makes the scope of the claim unclear because the first claim limitation implies that the processor sends a request to a distributed ledger to create a digital surrogate, while the second claim recitation implies that the processor itself creates the digital surrogate. Therefore, the scope of the claim is unclear and one of ordinary skill in the art would not be reasonably appraised of the scope of the claim.
Dependent claims 2-8, 10-15 and 17-20 are also rejected for being directed to the limitations of the rejected claims 1 and 11.
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 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.
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 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 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.
Claims 1-8, 10-15 and 17-20 are rejected under 35 U.S.C. 103 as being unpatentable over Berti et al. (US Patent No. 2019/0251575,) in view of Cella et al. (US Patent Publication No. 2022/0198562,) further in view of Chalkey et al. (US Patent Publication No. 2023/0088936.)
With respect to claims 1, and 11, Berti et al. teach:
a. identifying and tracing a real-world asset, by using an … digital surrogate in a secure distributed ledger; (asset tracking through digital twin (i.e. surrogate): [0041], [0056])
b. creating the immutable digital surrogate for the physical real-world asset in the secure distributed ledger, by mapping an NFT (Non-Fungible Token)-based hard identifier to at least one of a physical cloneable function (PCF)-based identifier(s), and a physical unclonable function (PUF)-based identifier(s) configured to identify the physical real-world asset, (digital twin (i.e., digital surrogate) is created in a blockchain: [0075]-[0081] using a unique physical asset identifier (i.e., PCF or PUF) that is linked (i.e. mapped) to : [0078], digital twin is stored on a blockchain (i.e. immutable digital surrogate): [0060] blockchain repository is non-repudiable (immutable): [0114] blockchain repository stores asset information: [0122])
The examiner notes that according to Applicant’s Specification, PCF and PUF are identifiers such as a serial number ([0029]) In addition the examiner notes that the claim recitation “at least one of a physical cloneable function (PCF)-based identifier(s), and a physical unclonable function (PUF)-based identifier(s)” requires only one of the PCF and PUF used for creating the digital surrogate.
and wherein the immutable digital surrogate is created only for the physical real-world asset and is owned by a first owner of the physical real-world asset, and wherein the PUF-based identifiers and PCF-based identifiers are mapped to the NFT-based hard identifier via an immutable ledger record; (digital twins are digital representation of physical assets [0060]-[0061], digital twin record is updated to reflect changes in asset ownership: [0086], [0126]-[0127], [0189]-[0190])
The examiner notes that the claim recitation: “…wherein the immutable digital surrogate is created only for the physical real-world asset and is owned by a first owner of the physical real-world asset …,” indicates non-functional descriptive material and therefore does not further limit the scope of the claim.
i. initiating a parameter collection (set of attributes of the asset: [0041]-[0042])
wherein the parameter collection includes collecting a specification prose and a discretionary prose (attributes of the asset include specification log (i.e. specification prose) and transaction log (i.e., discretionary prose): FIG. 3, Logs 1-9: [0074], [0136], [0139])
The examiner notes that the claim recitation: “specification prose and discretionary prose,” merely associate names to asset parameters, and are interpreted as such.
the specification prose includes an … item-ID and an … item-metadata TLV (type-length-value) structure, (non-repudiable log includes serial number (i.e., item-id) and other asset attributes (i.e., metadata): FIG. 3, [0107]-[0108], [0110], [0115]-[0117], [0136])
and the item-metadata TLV structure includes at least one of a photo 3D model, and description of the physical real-world asset; (FIG. 3, [0124], [0136]-[0144])
… if the item-ID is not bound to the other immutable digital surrogate, an owner address with the owner-ID is associated to the item-ID; (assign ownership of the digital twin to a new owner: [0087]-[0091], Specify owners identifiers in the blockchain: [0167])
iv. initiating creation of a smart contract; (generating a digital agreement (i.e., smart contract): [0004], [0060], [0086])
v. releasing a token ID and acknowledging the creation of the immutable digital surrogate; (digital records of digital twins include identifiers: [0184], digital twins are recorded in a library: [0062])
d. associating ownership of the immutable digital surrogate to the owner-ID, using the owner-ID as the smart contract on the secure distributed ledger (ownership of digital twins associated based on digital agreements: [0051], [0056], [0058], [0190]-[0191])
wherein the immutable digital surrogate is accessible only by the first owner of the physical real-world asset; (repository may be accessed by registered owners: [0114]-[0115], [0125])
The examiner notes that the claim recitation: “…wherein the immutable digital surrogate is accessible …,” indicates intended use of the digital surrogate and therefore does not further limit the scope of the claim because the function “accessing” is not positively recited.
e. transferring the ownership of the immutable digital surrogate to track changes in ownership of the physical real-world asset and a transfer of the ownership of the immutable digital surrogate is performed in line with sale of the original physical real-world asset, thereby ensuring traceability and authenticity of the ownership of the physical real-world asset; (ownership transfer, change in ownership: [0084]-[0086], [0090], [0120] , [0127], [0154], asset tracking: FIG. 2, [0052]-[0056])
The examiner notes that the claim recitation: “…to track changes …,” indicates intended use of the transferring and therefore does not further limit the scope of the claim.
a transfer of the ownership of the immutable digital surrogate is performed in line with sale of the original physical real-world asset, thereby ensuring traceability and authenticity of the ownership of the physical real-world asset; (ownership transfer, change in ownership: [0084]-[0086], [0090], [0120] , [0127], [0154], asset tracking: FIG. 2, [0052]-[0056]))
The examiner notes that the claim recitation: “…is performed…thereby ensuring …,” indicates intended result from the transfer of ownership and therefore does not further limit the scope of the claim.
g. enabling first-time owners to associate specific immutable records, including messages, labels, or names to the immutable digital surrogate (the parties (i.e. owner) may enter descriptive information: [0114])
The examiner notes that the claim recitation: “enabling the first-time owners to associate specific immutable records …,” indicates intended use of the immutable records and therefore does not further limit the scope of the claim. In addition, the function “to associate” is performed by the first-time owner and therefore is outside the scope of the claimed method.
Berti et al. do not explicitly teach; however, Cella et al. teach:
ii. sending a query corresponding to the specification prose to the distributed ledger network, said query including the item-ID; (request for a digital twin: [0611], [0635])
iii. receiving a response from the distributed ledger network ( [0611], [0635])
wherein the response includes an error message to an event when the item-ID is bound to an other immutable digital surrogate, (evidence of fraud submitted in response to the request: [1261]-[1262])
c. differentiating the physical real-world asset from a counterfeit real-world asset, by using a digital immutable surrogate mapped to the physical real-world asset through at least one of the PUF based identifiers and PCF-based identifiers; (evidence of counterfeiting: [1261]-[1262])
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 evidence based response to requests for digital twins, as taught by Cella et al., into the digital twin (i.e. surrogate) management system of Berti et al., in order to prevent fraudulent actions. (Cella et al.: Abstract, [0238])
Berti et al. and Cella et al. do not explicitly teach; however, Chalkley et al. teach:
digital twin NFT, ([0014])
wherein the smart contract automatically executes, controls, and documents events and actions performed on the immutable digital surrogate mapped to the owner-ID, according to terms specified in the smart contract;(smart contract governs ownership, events, etc.[0058], [0065]-[0066])
f. validating an identity of the physical real-world asset, by comparing the physical real-world asset with the smart contract in the secure distributed ledge; (verify authenticity of the physical asset: [0039], [0051])
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 using NFTs as digital twins for physical assets and verification of real-world assets using smart contracts, as taught by Chalkley et al., into the digital twin (i.e. surrogate) management system of Berti et al., and Cella et al. in order to maintain accurate record of physical assets and their digital twins. (Chalkey et al.: Abstract, [0002])
Berti et al., Cella et al. and Chalkey et al. do not explicitly teach:
the item-ID is a combination of the PUF-based identifier and the PCF-based identifier,
the discretionary prose includes an owner-ID, a mutable TLV structure, a three-way mutable TLV structure, and an immutable TLV structure;
However, the examiner notes that the claim recitations merely describe data that indicates non-functional descriptive material and therefore do not further limit the scope of the claim.
With respect to claims 2 and 12 Berti et al. and Cella et al. and Chalkey et al. teach the limitations of claims 1 and 11.
Moreover, Berti et al. teach:
wherein the specification prose includes a factual attribute(s) of the physical real-world asset, (attributes of the asset include specification log (i.e. specification prose) and transaction log (i.e., discretionary prose): FIG. 3, Logs 1-9: [0074], [0136], [0139])
wherein the specification prose is immutable and identifies the physical real-world asset through the factual attributes thereof, (digital twin is stored on a blockchain (i.e. immutable digital surrogate): [0060] blockchain repository is non-repudiable (immutable): [0114] blockchain repository stores asset information: [0122])
The examiner notes that the claim recitations:
and wherein the discretionary prose includes attributes elected at discretion of the first owner and wherein the mutable TLV structure each of the type, the length, and the value is muted by a current owner or a future owner of the immutable digital surrogate,
and wherein in the three-way mutable TLV structure, each of the type, the length, and the value is muted by the current owner or the future owner only with approval from the first owner,
and wherein in the immutable TLV structure, each of the type, the length, and the value is set by the first owner and is not altered or deleted by the current owner or the future owner.
indicate not positively recited functions “elected” “is muted” “is set” that are performed by an “owner” which is a person. Therefore the functions even if written is positively recited form will not further limit the scope of the claim.
With respect to claims 3 and 13 Berti et al. and Cella et al. and Chalkey et al, teach the limitations of claims 1 and 11.
Moreover, Chalkey et al. teach:
using a mapping of between the digital surrogate and the original physical real-world asset to verify an authenticity of the original physical real-world asset during a purchase transaction and to identify the counterfeit real-world asset prior to finalizing a the purchase transaction. (authentication service authenticates the physical asset: [0031], [0036], [0050]-[0055], [0065], [0098])
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 using NFTs as digital twins for physical assets and verification of real-world assets using smart contracts, as taught by Chalkley et al., into the digital twin (i.e. surrogate) management system of Berti et al., and Cella et al. in order to maintain accurate record of physical assets and their digital twins. (Chalkey et al.: Abstract, [0002])
With respect to claims 4 and 14 Berti et al. and Cella et al. and Chalkey et al. teach the limitations of claims 1 and 11.
Moreover, Berti et al. teach:
wherein when the original physical real-world asset is sold by the current owner to a new owner, the ownership of the immutable digital surrogate is also transferred to the new owner, (ownership of digital twins associated based on digital agreements: [0051], [0056], [0058], [0190]-[0191])
In addition, Chalkey et al. teach:
and wherein transfer of the ownership of the immutable digital surrogate to the new owner mutates the current owner of the original physical real-world asset, without affecting the immutable records linked to the first owner of the original physical real-world asset and without deleting prior ownership records of the original physical real-world asset. ([0057]-[0058], [0063], [0066])
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 using NFTs as digital twins for physical assets and verification of real-world assets using smart contracts, as taught by Chalkley et al., into the digital twin (i.e. surrogate) management system of Berti et al., and Cella et al. in order to maintain accurate record of physical assets and their digital twins. (Chalkey et al.: Abstract, [0002])
The examiner notes that the claim recitations:
and wherein transfer of the ownership of the immutable digital surrogate to the new owner mutates the current owner of the original physical real-world asset, without affecting the immutable records linked to the first owner of the original physical real-world asset and without deleting prior ownership records of the original physical real-world asset;
indicate non-functional descriptive material and therefore does not further limit the scope of the claim.
With respect to claims 5 and 17 Berti et al. and Cella et al. and Chalkey et al. teach the limitations of claims 1 and 11.
Moreover, Berti et al. teach:
retaining registered immutable digital surrogates representative of corresponding original physical real-world assets for validation and transfer of the ownership of the corresponding original physical real-world assets. (digital twin creation in a blockchain: [0075]-[0081] using a unique physical asset identifier: [0078], non-repudiable log: [0074], [0103], [0107], [0114])
With respect to claims 6 and 18, Berti et al. and Cella et al. and Chalkey et al. teach the limitations of claims 1 and 11.
Moreover, Cella et al. teach:
enabling the current owner of the original physical real-world asset, a potential buyer, a manufacturer, and law enforcement agencies to look up an existence of the immutable digital surrogate associated with the original physical real-world asset, by querying for the original physical real-world asset, the PUF-based identifier and the PCF-based identifier to establish originality and the ownership of the original physical real-world asset. (rendering view of an asset based on a request (i.e., query): [0611], [0635])
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 evidence based response to requests for digital twins, as taught by Cella et al., into the digital twin (i.e. surrogate) management system of Berti et al., in order to prevent fraudulent actions. (Cella et al.: Abstract, [0238])
The examiner notes that the claim recitation “…to look up…to establish…” indicate intended use of the enabling by a person and therefore does not further limit the scope of the claim.
With respect to claims 7 and 19 Berti et al. and Cella et al. and Chalkey et al. teach the limitations of claims 1 and 11.
Moreover, Berti et al. teach:
wherein associating the immutable records to the immutable digital surrogate enables the first owner of the original physical real-world asset… (record including asset tag (i.e. label) and identifier: [0107]-[0110]
The examiner notes that the claim recitation “…to provide identification information necessary for creating the immutable digital surrogate along with a validation of originality of the original physical real-world asset by a certifying body.” Indicates intended use of the records and therefore does not further limit the scope of the claim.
With respect to claims 8 and 15 Berti et al. and Cella et al. and Chalkey et al. teach the limitations of claims 1 and 11.
In addition, Berti et al. teach:
the changes in the ownership of the original physical real-world asset is associated with the changes in the ownership of the immutable digital surrogate in an immutable form on the secure distributed ledger. ([0051]-[0052], [0056], [0126]-[0127])
Moreover, Cella et al. teach:
wherein the changes in the ownership of the original physical real-world asset are validated via changes in the ownership of the immutable digital surrogate, ([0327]-[0328])
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 evidence based response to requests for digital twins, as taught by Cella et al., into the digital twin (i.e. surrogate) management system of Berti et al., in order to prevent fraudulent actions. (Cella et al.: Abstract, [0238])
With respect to claims 10 and 20 Berti et al. and Cella et al. teach the limitations of claims 1 and 11.
Moreover, Berti et al. teach:
modifying mutable records associated with an ownership record of the original physical real-world asset, based on immutable constraints populated by different owners identified along an ownership chain of the original physical real-world asset. (physical attributes (i.e. mutable) are changed along with non-physical attributes (i.e. immutable): [0047]-[0053])
Conclusion
Applicant's amendment necessitated the new ground(s) of rejection presented in this Office action. Accordingly, THIS ACTION IS MADE FINAL. See MPEP § 706.07(a). 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.
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