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 .
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and the fee set forth in 37 CFR 1.17(e) has been timely paid, the finality of the previous Office action has been withdrawn pursuant to 37 CFR 1.114.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 01/26/2026 has been entered.
Acknowledgements
Claims 1-2, 4, 8-10, 12, and 15-17 have been amended. Claims 1-20 are pending and presented for examination.
Response to Arguments
Applicant’s arguments, see pgs. 7-8, filed 01/26/2026, with respect to the 35 U.S.C. 101 rejection of claims 1-20 have been fully considered and are persuasive. The 35 U.S.C. 101 rejection of claims 1-20 has been withdrawn for the following reasons: the limitation “onboarding the device subsequent to booting the device by the first entity of the device, wherein the onboarding includes accessing the blockchain subsequent to the registering of the onboarding service” is an additional element. The additional element, when considered in combination with other elements of the claim, integrates the judicial exception into a practical application because it improves the functioning of a computer.
Applicant’s amendments to claims 1 and 9, filed 01/26/2026, have overcome the prior art rejections set forth in the Final Rejection 10/08/2025. Therefore, the rejections have been withdrawn. However, upon further consideration, a new ground(s) of rejection is made in view of Cabre et al. U.S. 2022/0303123.
Applicant has not provided any further remarks against the prior art of record that need to be addressed here.
Claim Objections
Claims 1, 9, and 15 are objected to because of the following informalities:
-“the registering of the onboarding service” should be “the registering of the ownership voucher into the onboarding service”
-“accessing of the blockchain is performed to transfer of the ownership voucher” should be “accessing of the blockchain is performed to transfer
Appropriate correction is required.
Claim Rejections - 35 USC § 103
In the event the determination of the status of the application as subject to AIA 35 U.S.C. 102 and 103 (or as subject to pre-AIA 35 U.S.C. 102 and 103) is incorrect, any correction of the statutory basis (i.e., changing from AIA to pre-AIA ) for the rejection will not be considered a new ground of rejection if the prior art relied upon, and the rationale supporting the rejection, would be the same under either status.
The following is a quotation of 35 U.S.C. 103 which forms the basis for all obviousness rejections set forth in this Office action:
A patent for a claimed invention may not be obtained, notwithstanding that the claimed invention is not identically disclosed as set forth in section 102, if the differences between the claimed invention and the prior art are such that the claimed invention as a whole would have been obvious before the effective filing date of the claimed invention to a person having ordinary skill in the art to which the claimed invention pertains. Patentability shall not be negated by the manner in which the invention was made.
Claims 1-2, 4-10 and 12-20 are rejected under 35 U.S.C. 103 as being unpatentable over Choi et al. U.S. 2023/0009663 (herein as “Choi”) in view of Ghosh et al. U.S. Patent 12,333,602 (herein as “Ghosh”), and further in view of Cabre et al. U.S. 2022/0303123 (herein as “Cabre”).
Re Claim 1, a method comprising:
executing, by a processor [0086], a smart contract for transfer of ownership of a device between a first entity and a second entity ([0072] – “the device DApp 13 may change the ownership of the device from the first user to the second user,” Fig. 6 – “Generate smart contract based ownership change event (S615),” [0085] – “it is possible to provide various application services by utilizing smart contract technology,” thereby suggesting that a smart contract is used, or executed, to facilitate ownership transfer of a device between the users, i.e. entities) […];
[…] retrieving and extending an ownership voucher of the device […] ([0071] – “generate a smart contract based ownership change event,” “change event may include temporarily changing or permanently changing the ownership of things,” i.e. ownership voucher, [0076] – “providing a smart contract based ownership change event generated by the blockchain,” i.e. retrieving and extending, the act of providing is analogous to extending, and being able to provide the generated change event suggests that the generated change event was retrieved);
generating a transaction block to represent the transaction, wherein the transaction block that is signed by the first entity and the second entity creating a chain of trust, and wherein the transaction block includes the ownership voucher ([0044] – “the users 21 and 22 may prove an ownership by digital-signing the tra[nsa]ction with a private key in order to generate the transaction, and the digital-signed transaction may be propagated and recorded to the blockchain 10,” [0040] – “the blockchain 10 records data in a block of a specific unit,” [0072] – “record a change history of the device ownership in the blockchain,” an ownership voucher is described in the instant specification [0032] as “a digital document that links…the seller…to herein as the buyer,” i.e. the parties in which the change is involved. Therefore, an “ownership voucher” is reasonably interpreted to be a set of information in digital format. Recording to the blockchain the signed transaction by users 21 and 22 to prove an ownership, i.e. buyer and seller, includes the parties linked/involved in the change of ownership, and such information is included in a block, i.e. transaction block includes the ownership voucher); and
subsequent to the transaction, registering the ownership voucher of the device into an onboarding service providing the onboarding service access to the blockchain ([0043] – “DApp…an application that may provide a specific service based on the blockchain 10,” i.e. onboarding service, “perform user registration and device registration through the DApp management module 150,” [0072] – “the device DApp 13 may record a change history of the device ownership in the blockchain 10,” i.e. register the ownership voucher, performing registration and recording a change history provides DApp access to the blockchain); and
[…] wherein the onboarding includes accessing the blockchain subsequent to the registering of the onboarding service ([0059] – “receive the user registration request of the user 22,” i.e. onboarding, [0062] – “transmit a user DApp and the key to the blockchain 10…and may be returned with the transaction Tx from the blockchain 10,” i.e. accessing the blockchain, registering the device can be performed after an ownership change [0093], i.e. subsequent to the registering of the onboarding service), wherein the accessing of the blockchain is performed to transfer of the ownership […] of the device from the second entity to the first entity in the blockchain subsequent to a successful authentication based on the chain of trust, wherein the first entity is a new owner of the device (Fig. 6 – device ownership change between first and second user requires accessing the blockchain, [0040] – “According to such blockchain technology, integrity and security of a transaction history may be guaranteed through a consensus process,” i.e. a successful authentication based on the train of trust).
However, Choi does not expressly disclose the limitations italicized below
wherein the executing of the smart contract includes determining whether a condition of the smart contract is met;
in response to determining that the condition of the smart contract is met, triggering an off-chain computation of a blockchain based on a first private blockchain of the first entity and a second private blockchain of the second entity, wherein the off-chain computation includes retrieving and extending an ownership voucher of the device from the second private blockchain to the first private blockchain via a transaction;
transfer of the ownership is transfer of the ownership voucher.
Ghosh discloses transferring protected NFT across networks. Specifically, Ghosh discloses
wherein the executing of the smart contract includes determining whether a condition of the smart contract is met Col. 27, lines 4-8 – “The smart contract interface can execute instructions at the smart contract or triggered by the smart contract in response to detection of objects or conditions external to the smart contract”;
in response to determining that the condition of the smart contract is met Col. 5, lines 37-41 – “The smart contract control structure can allow output of various contents linked to the protected NFT upon determining at least one outputting attribute of a plurality of outputting attributes is satisfied,” triggering an off-chain computation of a blockchain based on a first private blockchain of the first entity and a second private blockchain of the second entity, wherein the off-chain computation includes retrieving and extending an ownership voucher from the second private blockchain to the first private blockchain via a transaction (Col. 54, lines 16-19 – “In response to receiving the network transfer request (i.e. triggering an off-chain computation), the one or more processors may transfer (i.e. via a transaction) the protected NFT (i.e. ownership voucher) from the first blockchain network (i.e. second private blockchain) to the second blockchain network (i.e. first private blockchain),” lines 39-42 - “the first blockchain network is a first private blockchain and the second blockchain network is a second private blockchain”); and
transfer of the ownership is transfer of the ownership voucher (Col. 54, lines 10-11 – “transfer the protected NFT (i.e. ownership voucher) across networks,” Col. 43, lines 2-5 – “the protected NFT can digitally represent the physical asset…and can serve as proof of ownership and protection of a specific asset”).
It would have been obvious to a person of ordinary skill in the art before the effective filing date of the claimed invention to modify Choi’s method for delegating device ownership with the teachings of transferring an ownership voucher from a second private blockchain to a first private blockchain in response to a condition of a smart contract being met in Ghosh. One would be motivated to make this combination to protect entities and users from exposing their protected or private information, thereby significantly improving security and integrity of assets and data that are exchanged Ghosh, Col. 6, lines 28-32.
However, Choi in view of Ghosh do not explicitly teach
onboarding the device subsequent to booting the device by the first entity of the device.
Cabre discloses system and methods for establishing security profiles for Internet of Things (IoT) devices and trusted platforms. Specifically, Cabre discloses
onboarding the device subsequent to booting the device by the first entity of the device ([0095] – “The OBT updates a Device Resource instructing it which security profile to transition to (i.e. onboarding) when the Device boots”).
It would have been obvious to a person of ordinary skill in the art before the effective filing date of the claimed invention to modify Choi in view of Ghosh’s method for delegating device ownership with the teachings of onboarding the device subsequent to booting the device by the first entity of the device in Ghosh. One would be motivated to make this combination to ensure the appropriate security profile is used upon booting the device Cabre, [0025], [0111].
Re Claim 2, Choi in view of Ghosh and Cabre teach the method of claim 1, and Choi in view of Ghosh and Cabre further teach wherein the smart contract includes a binding contractual agreement between the first entity and the second entity of the device Ghosh, Col. 42, lines 39-45 – “”smart contract” generally refers to a self-executing code…that executes when a set of conditions that have been agreed upon by the parties of the smart contract are met.”
It would have been obvious to a person of ordinary skill in the art before the effective filing date of the claimed invention to combine Choi’s method for delegating device ownership with the teachings of conditions that have been agreed upon in a smart contract in Ghosh. This is a well-known aspect of a smart contract Ghosh, Col. 42, lines 39-45, therefore, the combination of prior art elements according to known methods would yield predictable results and renders the claim obvious.
Re Claim 4, Choi in view of Ghosh and Cabre teach the method of claim 1, and Choi in view of Ghosh and Cabre further teach further comprising adding a new block in the blockchain when the first entity transfers ownership of the device Choi [0040] – “the blockchain 10 records data in a block of a specific unit,” [0072] – “record a change history of the device ownership in the blockchain 10.”
Re Claim 5, Choi in view of Ghosh and Cabre teach the method of claim 1, and Choi in view of Ghosh and Cabre further teach wherein an output of the transaction is signed by the second entity and the first entity (Choi [0044] – “the digital-signed transaction may be propagated and recorded to the blockchain,” “the users 21 and 22 (i.e. buyer and seller, or vice versa) may prove an ownership by digital-signing the tra[nsa]ction with a private key,” the recorded, digital-signed transaction on the blockchain is analogous to an output, which is signed by both users 21 and 22).
Re Claim 6, Choi in view of Ghosh and Cabre teach the method of claim 1, and Choi in view of Ghosh and Cabre further teach wherein an input for the transaction is signed by the second entity (first entity in claim 19) (Choi [0044] – “the users 21 and 22 (i.e. first and second entity) may prove an ownership by digital-signing the tra[nsa]ction with a private key in order to generate the transaction”).
Re Claim 7, Choi in view of Ghosh and Cabre teach the method of claim 1, and Choi in view of Ghosh and Cabre further teach wherein the ownership voucher is encrypted using a public key (of an owner in claim 20) (Ghosh, Col. 12, lines 11-12 – “encrypting the NFT using the public key,” of a user, i.e. owner).
It would have been obvious to a person of ordinary skill in the art before the effective filing date of the claimed invention to combine Choi’s method for delegating device ownership with the teachings of encrypting the NFT using a public key in Ghosh. One would be motivated to make the combination to prevent unauthorized parties from performing unauthorized actions on the data Ghosh, Col. 14, lines 61-62.
Re Claim 8, Choi in view of Ghosh and Cabre teach the method of claim 1, and Choi in view of Ghosh and Cabre further teach wherein a fast identity online service can decrypt the ownership voucher included in the blockchain using a private key within an electronic wallet of the first entity during the onboarding of the device (Ghosh, Col. 12, lines 7-11 – “verifying can include decrypting the NFT using the private key to verify the digital signature came from the particular public key or public address (e.g., particular digital wallet of a user),” Col. 11, lines 65-66 – “the cryptographic key processor” is analogous to a fast identity online service).
It would have been obvious to a person of ordinary skill in the art before the effective filing date of the claimed invention to combine Choi’s method for delegating device ownership with the teachings of decrypting the NFT using a private key in Ghosh. One would be motivated to make the combination to prevent unauthorized parties from performing unauthorized actions on the data Ghosh, Col. 14, lines 61-62.
Re Claims 9-10 and 12-14, they are the system claims of method claims 1-2 and 4-6, respectively. They recite similar distinguishing features to their respective method claims. Furthermore, Choi discloses implementing the method and system using a processor and memory Fig. 8. Therefore, they are rejected for the same reasons above.
Re Claims 15-20, they are the non-transitory computer-readable medium claims of method claims 1-2 and 4-7, respectively. They recite similar distinguishing features to their respective method claims. Furthermore, Choi discloses the program or software for implementing the method and system may be stored in a computer readable medium [0082]. Therefore, they are rejected for the same reasons above.
Claims 3 and 11 are rejected under 35 U.S.C. 103 as being unpatentable over Choi et al. U.S. 2023/0009663 (herein referred to as “Choi”) in view of Ghosh et al. U.S. Patent 12,333,602 (herein as “Ghosh”), and further in view of Cabre et al. U.S. 2022/0303123 (herein as “Cabre”) as applied to claims 1 and 9 above, and further in view of Lohar et al. U.S. 2024/0394726 (herein referred to as “Lohar”).
Re Claim 3, Choi in view of Ghosh and Cabre teach the method of claim 1, Choi in view of Ghosh and Cabre further teach wherein the blockchain is a […] blockchain with the second entity and the first entity as stakeholders (Choi, Fig. 1 illustrates blockchain 10 with first user 21 and second user 22, i.e. stakeholders).
However, Choi in view of Ghosh and Cabre do not explicitly teach the blockchain is a consortium blockchain.
Lohar discloses an authentication system and method for physical goods. Specifically, Lohar discloses using distributed ledger technologies like blockchain for storing and verifying data [0063]. Such distributed ledger can be a consortium distributed ledger [0106].
It would have been obvious to a person of ordinary skill in the art before the effective filing date of the claimed invention to combine Choi in view of Ghosh and Cabre’s method for delegating device ownership with the teachings of a consortium distributed ledger in Lohar. It would have been obvious to try by choosing from a finite number of identified, predictable solutions (e.g. types of blockchains), with a reasonable expectation of success.
Re Claim 11, it is the system claim of method claim 3. It recites similar distinguishing features to its respective method claim. Therefore, it is rejected for the same reasons above.
Conclusion
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/CHRISTINE DANG/Examiner, Art Unit 3698