DETAILED ACTION
Status of the Claims
The following is a Non-final Office Action in response to amendments and remarks filed 28 August 2025.
Claim 1 has been amended.
Claim 19 has been cancelled.
Claim 21 has been added.
Claims 1-18 and 20-21 are pending and have been examined.
The present application, filed on or after March 16, 2013, is being examined under the first inventor to file provisions of the AIA .
Response to Arguments
Applicant's arguments filed 28 August 2025 have been fully considered but they are not persuasive.
Applicant argues that the 35 U.S.C. 101 rejection under the Alice Corp. vs. CLS Bank Int’l be withdrawn; however the Examiner respectfully disagrees. As an initial note, the arguments are not compliant under 37 CFR 1.111(b) as they amount to a mere allegation of patent eligibility. The Examiner notes that in order to be patent eligible under 35 U.S.C. 101, the claims must be directed towards a patent eligible concept, which, the instant claims are not directed. The Examiner, again, notes that the previous claim amendments have amended a step (the verifying step) from a more functional limitation to an insignificant data gathering activity. Further, and again, contrary to Applicants’ assertion that the claims are not a certain method of organizing human activity, the Examiner notes that verifying physical items against a copy (i.e. twin) is a function that retailers, pawn shops, auction houses, rare item and antique dealers etc. have traditionally performed/provided for users or customers. Next, the claims are not directed to a practical application of the concept. The claims do not result in improvements to the functioning of a computer or to any other technology or technical field. They do not effect a particular treatment for a disease. They are not applied with or by a particular machine. They do not effect a transformation or reduction of a particular article to a different state or thing. And they are not applied in some other meaningful way beyond generally linking the use of the judicial exception (i.e., verifying a physical object and creating a copy for a listing) to a particular technological environment (i.e., with the use of generic computing components). Here, again as noted in the previous rejections, mere instructions to apply an exception using a generic computer component cannot provide an inventive concept - MPEP 2016.05(f). Method claim 1 is devoid of any additional elements or structure and the remaining claims only recites one additional element – using at least a memory and a processor (claim 15) and one or more processors (claim 20) to perform the steps. Contrary to Applicant’s assertions, “programmatically encoding” in the context of the claims, under the broadest reasonable interpretation, could be simply be manually linking the physical product to the copy/twin via some sort of serialization done with information cards/photographs. Again, the claims recitation of the “captured using one or more sensors of a client device” and “on a blockchain” is/are only generally linking the use of the judicial exception to a particular technological environment or field of use – see MPEP 2106.04(d)(I) discussing MPEP 2106.05(h). Accordingly, the combination of these additional elements does not integrate the abstract idea into a practical application because it does not impose any meaningful limits on practicing the abstract idea. The claim is directed to an abstract idea, even when considered as a whole and the rejection not withdrawn.
Again, this argument appears to be whether or not the use of computer or computing components for increased speed and efficiency makes the claims eligible; however the Examiner respectfully disagrees. Nor, in addressing the second step of Alice, does claiming the improved speed or efficiency inherent with applying the abstract idea on a computer provide a sufficient inventive concept. See Bancorp Servs., LLC v. Sun Life Assurance Co. of Can., 687 F.3d 1266, 1278 (Fed. Cir. 2012) (“[T]he fact that the required calculations could be performed more efficiently via a computer does not materially alter the patent eligibility of the claimed subject matter.”); CLS Bank, Int’l v. Alice Corp., 717 F.3d 1269, 1286 (Fed. Cir. 2013) (en banc) aff’d, 134 S. Ct. 2347 (2014) (“[S]imply appending generic computer functionality to lend speed or efficiency to the performance of an otherwise abstract concept does not meaningfully limit claim scope for purposes of patent eligibility.” (citations omitted)). The claim(s) is/are not patent eligible and the rejection not withdrawn.
Applicant, again, argues that the Kalaldeh reference does not disclose the “generating, by a client device, a fingerprint of a physical item by processing sensor data captured by one or more sensors of the client device to extract one or more features of the physical item”; however the Examiner respectfully disagrees for a plurality of reasons. Firstly, Applicant's remarks are merely conclusory statements regarding the Kalaldeh reference, interpreting portions in a vacuum. As previously cited, Kalaldeh “In general, this invention relates to; Firstly, issuing Certificates of Ownership that are said to have a new inseparable intrinsic identity “fingerprint” derived from and permanently attached to physical assets as such these are secure, impregnable and perpetual as its NFT counterpart on the blockchain, and then Secondly, preserving this intrinsic identity or “fingerprint” as an encrypted metadata stored and registered in the same NFT certificate or smart contract of that physical asset. Thirdly, devising a method of verification that the stored fingerprints minted, i.e.: that were created in the first place for physical assets with their correspondent NFTs are verified to be indeed matching and belonging to the same physical assets these fingerprints are now being read from. These “fingerprints” associated and derived or “minted” from the physical assets at the time the creator created the NFT are described elaborately in this application and they would serve and stand as ideal intrinsic identifiers of physical items because (i) they exhibit a very high entropy˜900 bits+ of uniqueness, (ii) form visual ornaments or patterns discernable by the use of computers (iii) Highly tolerant and work as permanent identifiers due to their resilience to change and immutability with daily use as they don't fade away with time for they are naturally embedded within virtually any physical asset's surface (Kaladeh ¶29-¶30)” in which these portions are literally describing how the NFT is generated from the user’s device with an image sensor (as shown, and previously cited, in Fig. 11-Fig. 12). As such, this argument is not persuasive and the rejection not withdrawn.
Applicant next argues that the Spivack reference does not teach the “;” however the Examiner disagrees. Here, as noted in the interview 21 August 2025, this limitation is only positively reciting the “transmitting” step as the “...to verify” is now the intended use of the step (i.e. the actual verification was previously amended out of the claim). Applicant is once again interpreting the references within a vacuum. Here, contrary to Applicant’s assertions and conclusory statements regarding Spivack, Spivack reads upon both aspects, as previously cited, considering Spivack is able to transmit somesort of predetermined validation information which is then used to autehtnicate **. This is not the Spivack reference having the validation performed prior to transmission; the Spivack reference is referring to the type of metadata used to perform the authentication as the “The attribute data can also include predetermined validation metadata (e.g., security metadata) of the security device. The predetermined validation metadata can be generated during the fingerprinting stage of security devices, through quantification of a chaosmetric metric of the security device (e.g., using a sharpness metric and/or a structural metric) (Spivack ¶245).” Spivack further teaches how “For example, in a security device with fractal features/patterns, the chaosmetric signal-to-noise ratio for authentication can be increased by using a micro-scale index also referred to as “structural similarity” to compare a fractal's specific chaosmetric artifacts with a fingerprinted baseline (e.g., by the authentication engine 318 of the example of FIG. 3A and/or the authentication engine 414 of the example of FIG. 4A). Such micro-scale index can be used for authentication in addition to measuring macro-scale indices caused by the general distortion patterns in a fractal pattern to compare a fractal pattern's general chaosmetric artifacts with a fingerprinted baseline (Spivack ¶221).” As such, this argument is not persuasive and the rejection not withdrawn.
In response to arguments in reference to any depending claims that have not been individually addressed, all rejections made towards these dependent claims are maintained due to a lack of reply by the Applicants in regards to distinctly and specifically pointing out the supposed errors in the Examiner's prior office action (37 CFR 1.111). The Examiner asserts that the Applicants only argue that the dependent claims should be allowable because the independent claims are unobvious and patentable over the prior art.
Double Patenting
Claims 1-18 and 20-21 are rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-20 of copending Application No. 17/493,062 (now Patent No. 11,756,047). Although the claims at issue are not identical, they are not patentably distinct as shown below:
18/365,849
17/493,062
1. A method comprising: generating, by a client device, a fingerprint of a physical item by processing sensor data captured by one or more sensors of the client device to extract one or more features of the physical item; transmitting the fingerprint of the physical item from the client device to an authentication service via a network to verify that the physical item corresponds to an authentic physical item by matching the fingerprint of the physical item to distinguishing features of the authentic physical item; receiving, at the client device, a response from the authentication service via the network verifying that the physical item corresponds to the authentic physical item based on matching the fingerprint of the physical item to the stored distinguishing features; minting a digital twin non-fungible token (NFT) of the physical item on a blockchain by creating the digital twin NFT on the blockchain and programmatically encoding an association of metadata with the digital twin NFT, the metadata including at least the matched fingerprint and a condition of the physical item; and generating a combined listing for the physical item and the digital twin NFT..
15. A computing device comprising: a fingerprint capture system to capture one or more features of a physical item; and at least a memory and a processor to perform operations comprising: generating a fingerprint of a physical item using the one or more features of the physical item captured using the fingerprint capture system; transmitting the fingerprint of the physical item from the client device to an authentication service via a network to verify that the physical item corresponds to an authentic physical item by matching the fingerprint of the physical item to distinguishing features of the authentic physical item; receiving a response from the authentication service via the network verifying that the physical item corresponds to the authentic physical item; minting a digital twin non-fungible token (NFT) of the physical item on a blockchain by creating the digital twin NFT on the blockchain and programmatically encoding an association of metadata with the digital twin NFT, the metadata including at least the matched fingerprint and a condition of the physical item; and generating a combined listing for the physical item and the digital twin NFT.
20. One or more computer-readable storage devices, having instructions stored thereon that, responsive to execution by one or more processors of a computing device perform operations comprising: generating a fingerprint of a physical item using one or more features of the physical item the one or more features of the physical item captured using one or more sensors of the computing device; transmitting the fingerprint of the physical item from the computing device to an authentication service via a network to verify that the physical item corresponds to an authentic physical item by matching the fingerprint of the physical item to distinguishing features of the authentic physical item; receiving, at the computing device, a response from the authentication service via the network verifying that the physical item corresponds to the authentic physical item; minting a digital twin non-fungible token (NFT) of the physical item on a blockchain by creating the digital twin NFT on the blockchain and programmatically encoding an association of metadata with the digital twin NFT, the metadata including at least the matched fingerprint and a condition of the physical item; and generating a combined listing for the physical item and the digital twin NFT.
1. A method comprising: receiving, from a client device, a request to generate a combined listing for a physical item and a digital twin non-fungible token (NFT) of the physical item, the request indicating that the physical item corresponds to an authentic physical item; outputting, at the client device, a fingerprinting interface providing instructions for capturing one or more features of the physical item used to verify that the physical item corresponds to the authentic physical item; capturing the one or more features of the physical item using a fingerprint capture system of the client device according to the instructions; generating a fingerprint of the physical item using the captured one or more features of the physical item; transmitting the fingerprint of the physical item to an authentication service via a network to verify that the physical item corresponds to the authentic physical item by matching the fingerprint of the physical item to distinguishing features of the authentic physical item; receiving a response from the authentication service via the network verifying that the physical item corresponds to the authentic physical item; causing minting of the digital twin NFT on a blockchain, the minting including creating the digital twin NFT on the blockchain and programmatically encoding an association of metadata with the digital twin NFT, the metadata including the matched fingerprint, digital content of the physical item, and a condition of the physical item; and generating the combined listing for the physical item and the digital twin NFT on a listing platform.
10. A computing device comprising: a fingerprint capture system to capture one or more features of a physical item; and at least a memory and a processor to perform operations comprising: generating a fingerprint of the physical item using the captured one or more features of the physical item; transmitting the fingerprint of the physical item to an authentication service via a network to verify that the physical item corresponds to an authentic physical item by matching the fingerprint of the physical item to distinguishing features of the authentic physical item; receiving a response from the authentication service via the network verifying that the physical item corresponds to the authentic physical item; causing minting of a digital twin non-fungible token (NFT) of the physical item on a blockchain using the matched fingerprint, wherein the minting includes creating the digital twin NFT on the blockchain and programmatically encoding an association of metadata with the digital twin NFT, and wherein the metadata includes at least the matched fingerprint and a condition of the physical item; and generating a combined listing for the physical item and the digital twin NFT on a listing platform.
18. A system comprising: a fingerprint capture system to generate a fingerprint of a physical item using one or more features of the physical item captured using one or more sensors of a client device; an authentication service system to verify that the physical item corresponds to an authentic physical item by matching the fingerprint of the physical item to distinguishing features of the authentic physical item; a minting system to mint a digital twin non-fungible token (NFT) of the physical item on a blockchain by creating the digital twin NFT on the blockchain and programmatically encoding an association of metadata with the digital twin NFT, the metadata including at least the matched fingerprint and a condition of the physical item; and a listing platform to generate a combined listing for the physical item and the digital twin NFT.
The independent claims 1, 10, and 18 of the copending Application No. 17/493,062 (now Patent No. 11,756,047), hereinafter ‘047 Patent) are not identical to the instant claims 1, 15, and 20 but however claim the same inventive concept fingerprinting a physical item and minting a non-fungible token of the item to be stored on a blockchain (the instant claims are much more broad). Here, specifically, instant claim 1 is rejected on the ground of nonstatutory obviousness-type double patenting as being unpatentable over claim 1 of the ‘047 Patent. The claims differ in that instant claim 1 recites that there is a combined listing for the physical item which has been verified an a digital twin NFT whereas claim 1 of the ‘047 Patent recites that there is some sort of initial request before performing any of the aforementioned steps (as highlighted in the table above). The portion of the specification in the ‘047 Patent that supports the recited request aspects includes an embodiment that would anticipate instant claim 1 herein. Instant claim 1 cannot be considered patentably distinct over claim 1 of the ‘047 Patent when there is a specifically disclosed embodiment that supports claim 1 of that patent and falls within the scope of claim 1 herein because it would have been obvious to one having ordinary skill in the art to modify the method of claim 1 by selecting a specifically disclosed embodiment that supports that claim, i.e., the initial requesting step. One having ordinary skill in the art would have been motivated to do this because that embodiment is disclosed as being a preferred embodiment within claim 1. Instant independent claims 8 and 15 are rejected under the same rationale, mutatis mutandis.
Dependent claims 2-9 and 11-17 of the ‘047 Patent recite substantially similar subject matter as the instant claims 2-14, 16-18, and 21. The claims are also rejected for their dependencies on claims 1, 15, and 20. The nonstatutory double patenting rejection is based on a judicially created doctrine grounded in public policy (a policy reflected in the statute) so as to prevent the unjustified or improper timewise extension of the “right to exclude” granted by a patent and to prevent possible harassment by multiple assignees. A nonstatutory double patenting rejection is appropriate where the claims at issue are not identical, but at least one examined application claim is not patentably distinct from the reference claim(s) because the examined application claim is either anticipated by, or would have been obvious over, the reference claim(s). See, e.g., In re Berg, 140 F.3d 1428, 46 USPQ2d 1226 (Fed. Cir. 1998); In re Goodman, 11 F.3d 1046, 29 USPQ2d 2010 (Fed. Cir. 1993); In re Longi, 759 F.2d 887, 225 USPQ 645 (Fed. Cir. 1985); In re Van Ornum, 686 F.2d 937, 214 USPQ 761 (CCPA 1982); In re Vogel, 422 F.2d 438, 164 USPQ 619 (CCPA 1970); and In re Thorington, 418 F.2d 528, 163 USPQ 644 (CCPA 1969).
A timely filed terminal disclaimer in compliance with 37 CFR 1.321(c) or 1.321(d) may be used to overcome an actual or provisional rejection based on a nonstatutory double patenting ground provided the reference application or patent either is shown to be commonly owned with this application, or claims an invention made as a result of activities undertaken within the scope of a joint research agreement. A terminal disclaimer must be signed in compliance with 37 CFR 1.321(b).
The USPTO internet Web site contains terminal disclaimer forms which may be used. Please visit http://www.uspto.gov/forms/. The filing date of the application will determine what form should be used. A web-based eTerminal Disclaimer may be filled out completely online using web-screens. An eTerminal Disclaimer that meets all requirements is auto-processed and approved immediately upon submission. For more information about eTerminal Disclaimers, refer to http://www.uspto.gov/patents/process/file/efs/guidance/eTD-info-I.jsp.
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 1-18 and 20-21 is/are rejected under 35 U.S.C. 101 because the claimed invention is directed to an abstract idea without significantly more. The claims are directed to a process (an act, or series of acts or steps), a machine (a concrete thing, consisting of parts, or of certain devices and combination of devices), and a manufacture (an article produced from raw or prepared materials by giving these materials new forms, qualities, properties, or combinations, whether by hand labor or by machinery). Thus, each of the claims falls within one of the four statutory categories (Step 1). However, the claim(s) recite(s) generating a combined listing for a physical item and digital twin NFT which is an abstract idea of organizing human activities.
The limitations of “generating a fingerprint of a physical item [by] extract one or more features of the physical item…; minting a digital twin non-fungible token (NFT) of the physical item on a blockchain by creating the digital twin NFT on the blockchain and programmatically encoding an association of metadata with the digital twin NFT, the metadata including at least the matched fingerprint and a condition of the physical item; and generating a combined listing for the physical item and the digital twin NFT,” as drafted, is a process that, under its broadest reasonable interpretation, covers organizing human activities--fundamental economic principles or practices (including hedging, insurance, mitigating risk); commercial or legal interactions (including agreements in the form of contracts; legal obligations; advertising, marketing or sales activities or behaviors; business relations); managing personal behavior or relationships or interactions between people (including social activities, teaching, and following rules or instructions) but for the recitation of generic computer components (Step 2A Prong 1). That is, other than reciting “A method comprising,” (or “computing device comprising: a fingerprint capture system to capture one or more features of a physical item; and at least a memory and a processor to perform operations comprising,” in claim 15 or “one or more computer-readable storage devices, having instructions stored thereon that, responsive to execution by one or more processors of a computing device perform operations comprising:” in claim 20) nothing in the claim element precludes the step from the methods of organizing human interactions grouping. For example, but for the “A method comprising,” (or “computing device comprising: a fingerprint capture system to capture one or more features of a physical item; and at least a memory and a processor to perform operations comprising,” in claim 15 or “one or more computer-readable storage devices, having instructions stored thereon that, responsive to execution by one or more processors of a computing device perform operations comprising:” in claim 20) language, “generating,” “minting,” and “generating” in the context of this claim encompasses the user manually observing and inspecting a product to make some sort of digital copy of and list for sale which is a business relation/fundamental economic practice/commercial or legal interaction/advertising. If a claim limitation, under its broadest reasonable interpretation, covers performance of the limitation as one of the certain methods of organizing human activities, but for the recitation of generic computer components, then it falls within the “Certain Methods of Organizing Human Activities” grouping of abstract ideas. Accordingly, the claim(s) recite(s) an abstract idea.
This judicial exception is not integrated into a practical application (Step 2A Prong Two). The “one or more sensors of a client device” “transmitting...” and ”receiving,...” steps/element are simply insignificant extrasolution data gathering activities. Next, the claims only recite one additional element – using client device (claim 1), at least a memory and a processor (claim 15) and one or more processors (claim 20) to perform the steps. The at least a memory and/or processor in both steps is recited at a high-level of generality such that it amounts no more than mere instructions to apply the exception using a generic computer component. Specifically the claims amount to nothing more than an instruction to apply the abstract idea using a generic computer or invoking computers as tools by adding the words “apply it” (or an equivalent) with the judicial exception, or mere instructions to implement an abstract idea on a computer, or merely uses a computer as a tool to perform an abstract idea - see MPEP 2106.04(d)(I) discussing MPEP 2106.05(f). The claims recitation of the “captured using one or more sensors of a client device” and “on a blockchain” is/are only generally linking the use of the judicial exception to a particular technological environment or field of use – see MPEP 2106.04(d)(I) discussing MPEP 2106.05(h). Accordingly, the combination of these additional elements does not integrate the abstract idea into a practical application because it does not impose any meaningful limits on practicing the abstract idea. The claim is directed to an abstract idea, even when considered as a whole.
The claim does not include a combination of additional elements that are sufficient to amount to significantly more than the judicial exception (Step 2B). As discussed above with respect to integration of the abstract idea into a practical application (Step 2A Prong 2), the combination of additional elements of using client device (claim 1), at least a memory and a processor (claim 15) and one or more processors (claim 20) to perform both the steps amounts to no more than mere instructions to apply the exception using a generic computer component. Mere instructions to apply an exception using a generic computer component cannot provide an inventive concept. Reevaluating here in step 2B, the “one or more sensors of a client device” “transmitting...” and ”receiving,...” steps/element which are performing insignificant extrasolution activities are also determined to be well-understood, routine and conventional activity in the field. The Symantec, TLI, and OIP Techs court decisions in MPEP 2106.05(d)(II) indicate that the mere receipt or transmission of data over a network is well-understood, routine, and conventional function when it is claimed in a merely generic manner (as is here). Therefore, when considering the additional elements alone, and in combination, there is no inventive concept in the claim. As such, the claim(s) is/are not patent eligible, even when considered as a whole.
Claims 2-5, 9, 11-14, and 21 are dependent on claims 1 and 15 and include all the limitations of claims 1 and 15. Therefore, claims 2-5, 9, 11-14, and 21 recite the same abstract idea of “generating a combined listing for a physical item and digital twin NFT.” The claim recites the additional limitations further limiting the item to include additional information such as a condition, location, age, new or used, which is still directed towards the abstract idea previously identified and is not an inventive concept that meaningfully limits the abstract idea. Again, as discussed with respect to claims 1, 15, and 20, the claims are simply limitations which are no more than mere instructions to apply the exception using a computer or with computing components. Accordingly, this additional element does not integrate the abstract idea into a practical application because it does not impose any meaningful limits on practicing the abstract idea. Even when considered as a whole, the claims do not integrate the judicial exception into a practical application at Step 2A or provide an inventive concept in Step 2B.
Claims 6-8, 10, and 16 are dependent on claims 1 and 15 and include all the limitations of claims 1 and 15. Therefore, claims 6-8, 10, and 16 recite the same abstract idea of “generating a combined listing for a physical item and digital twin NFT.” The claim recites the additional limitations are only further limiting the features and how the features are captured, which is still directed towards the abstract idea previously identified and is not an inventive concept that meaningfully limits the abstract idea. Again, as discussed with respect to claims 1, 15, and 20, the claims are simply limitations which are no more than mere instructions to apply the exception using a computer or with computing components. Accordingly, this additional element does not integrate the abstract idea into a practical application because it does not impose any meaningful limits on practicing the abstract idea. Even when considered as a whole, the claims do not integrate the judicial exception into a practical application at Step 2A or provide an inventive concept in Step 2B.
Claims 17-18 are dependent on claim 15 and include all the limitations of claim 15. Therefore, claims 17-18 recite the same abstract idea of “generating a combined listing for a physical item and digital twin NFT.” The claim recites the additional limitations that provide the user with instructions, which is still directed towards the abstract idea previously identified and is not an inventive concept that meaningfully limits the abstract idea. Again, as discussed with respect to claims 1, 15, and 20, the claims are simply limitations which are no more than mere instructions to apply the exception using a computer or with computing components. Accordingly, this additional element does not integrate the abstract idea into a practical application because it does not impose any meaningful limits on practicing the abstract idea. Even when considered as a whole, the claims do not integrate the judicial exception into a practical application at Step 2A or provide an inventive concept in Step 2B.
Claims 1-18 and 20-21 are therefore not eligible subject matter, even when considered as a whole.
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.
Claim(s) 1-2, 6-13, 15-18, and 20-21 is/are rejected under 35 U.S.C. 103 as being unpatentable over Kalaldeh et al. (US PG Pub. 2023/0045071) further in view of Spivack et al. (US 2020/0273048).
As per claims 1, 15, and 20, Kalaldeh discloses a method, computing device comprising: a fingerprint capture system to capture one or more features of a physical item; and at least a memory and a processor to perform operations comprising, and one or more computer-readable storage devices, having instructions stored thereon that, responsive to execution by one or more processors perform operations comprising: (system, method, computer readable medium, Kalaldeh Abstract; processor, ¶31 and ¶158; smartphone, ¶15, ¶28, and ¶175), the method comprising;:
generating, by a client device, a fingerprint of a physical item by processing sensor data captured by one or more sensors of the client device to extract one or more features of the physical item (fingerprint derived from physical assets, Kalaldeh ¶29-¶31; smartphone, ¶15; input device for acquiring image fingerprints for creating an NFT identity, ¶170 and ¶176-¶177; see lens apparatus in Fig. 11-Fig. 12);
minting a digital twin non-fungible token (NFT) of the physical item on a blockchain by creating the digital twin NFT on the blockchain and programmatically encoding an association of metadata with the digital twin NFT, the metadata including at least the matched fingerprint and a condition of the physical item (minted non-fungible token (NFT), Kalaldeh ¶11-¶12; As a creator (1) creates a physical artwork (2), then for this asset that creator will normally generate an NFT token, in the same time the fingerprint (p) at (4) is being minted and its fingerprint is hence produced, this (p) is then combined onchain or offchain depending on the used architecture to get the pNFT (3). Now as a collector (5) buys this pNFT, this buyer can make sure that not only the same physical asset beholding the pNFT has been purchased, but also that its claim of ownership carries that physical asset fingerprint too (3). This can be usually checked using the previous methods of reading apparatuses in FIG. (6) to FIG. (9) for later verification. Then the (p) fingerprint signature establishes a secure permanent connection between NFTs and physical assets (i.e. pNFT=Asset Fingerprint (p)+ NFT) and that's why the (p) beholds the code that enables collectors to verify received physical assets received against their pNFT tokens. pNFTs created for all kind of assets now can be truly be owned in a trustless, decentralized manner, ¶115) (Examiner notes the ownership/purchase availability/verification of the product as the equivalent to the “condition” of the physical item); and
generating a combined listing for the physical item and the digital twin NFT (directory, marketplace, sold, auction, Kalaldeh ¶19, ¶122, ¶143, ¶149, and ¶183) marketplaces where customers can buy their pNFT coupled physical products, ¶151).
Kalaldeh does not expressly disclose transmitting the fingerprint of the physical item from the client device to an authentication service via a network to verify that the physical item corresponds to an authentic physical item by matching the fingerprint of the physical item to distinguishing features of the authentic physical item; receiving, at the client device, a response from the authentication service via the network verifying that the physical item corresponds to the authentic physical item based on matching the fingerprint of the physical item to the stored distinguishing features.
However, Spivack teaches transmitting the fingerprint of the item from the client device to an authentication service via a network to verify that the physical item corresponds to an authentic physical item by matching the fingerprint of the physical item to distinguishing features of the authentic physical item; receiving, at the client device, a response from the authentication service via the network verifying that the physical item corresponds to the authentic physical item based on matching the fingerprint of the physical item to the stored distinguishing features (The attribute data can also include predetermined validation metadata (e.g., security metadata) of the security device. The predetermined validation metadata can be generated during the fingerprinting stage of security devices, through quantification of a chaosmetric metric of the security device (e.g., using a sharpness metric and/or a structural metric). The fingerprinting process is as further described in association with at least FIG. 5E of the present disclosure. In one embodiment, the predetermined validation data can be stored on a centrally-hosted server (e.g., the host server 100 of FIG. 1 and/or the host server 300 of FIG. 3A-3B), Spivack ¶245; the physical object is compared with the predetermined validation metadata of the security device. Note that at least part of the security process, such as that of comparison of scan data and the predetermined validation metadata of the security device, is performed off-chain (e.g. off the DLN on which the NFT is deployed). In essence the this portion of the security process, ie the comparison of scan data and the predetermined validation metadata of the security device can be performed on a centrally hosted server (e.g., the host server 100 of FIG. 1 and/or the host server 300 of FIG. 3A-3B) on which the predetermined validation data is stored, or performed in conjunction with the scan device (which could be any portable electronic device having an imaging unit or camera) (e.g. a scan device, a client device 102A-N as shown in the example of FIG. 1 and/or a client device 402 of the example of FIG. 4A). This is in contrast to an on-chain process where all nodes of the respective DLN participate in a given operation, ¶249; For example, in a security device with fractal features/patterns, the chaosmetric signal-to-noise ratio for authentication can be increased by using a micro-scale index also referred to as “structural similarity” to compare a fractal's specific chaosmetric artifacts with a fingerprinted baseline (e.g., by the authentication engine 318 of the example of FIG. 3A and/or the authentication engine 414 of the example of FIG. 4A). Such micro-scale index can be used for authentication in addition to measuring macro-scale indices caused by the general distortion patterns in a fractal pattern to compare a fractal pattern's general chaosmetric artifacts with a fingerprinted baseline, ¶221).
Both the Kalaldeh and the Spivack references are analogous in that both are directed towards/concerned with the creation and management of non-fungible tokens (NFTs). Before the effective filing date of the claimed invention, it would have been obvious to a person of ordinary skill in the art to use Spivack’s validation of physical items in Kalaldeh’s notification system to improve the system and method with reasonable expectation that this would result in a non-fungible tokens (NFTs) management system that is able to track authenticity with anti-counterfeiting techniques.
The motivation being that there is a need to create a traceable, manageable, identifiable and verifiable link between physical assets and NFTs (Spivack ¶99).
As per claim 2, Kaladeh and Spivack disclose as shown above with respect to claim 1. Kaladeh further discloses wherein the fingerprint of the physical item is unique to the physical item and does not change over time (unique, Kaladeh ¶3-¶4 and ¶7-¶8; see also ¶67).
As per claims 6 and 16, Kaladeh and Spivack disclose as shown above with respect to claims 1 and 15. Kaladeh further discloses wherein the one or more features of the physical item include one or more high-resolution image features of the physical item (100-800x magnification lens apparatus, Kalaldeh ¶32; wireless camera reading device, ¶75; on to a smart phone camera, ¶80-81; user create, read and verify pNFTs, with required software app, ¶28; user-friendly pictorial illustration, ¶115).
As per claim 8, Kaladeh and Spivack disclose as shown above with respect to claim 1. Kaladeh further discloses wherein the metadata of the digital twin NFT further includes an indication that the physical item corresponds to the authentic physical item (Blockchain storage of said fingerprints (p) of said physical items ensures that physical assets become blockchain indexed in a decentralized, immutable and unclonable fashion by virtue of blockchain architecture, and, therefore claimed ownership authenticity of physical items becomes a virtue of the said fingerprint (p) stored in an immutable fashion. [0149] (b) A verification means for physical items originality; withstanding the latter claim (a); a merchant or a vendor having a verified account at a marketplace, platform or a blockchain could claim and ensure physical items authenticity by having said fingerprints (p) of sold physical items on said blockchain. Said merchant or vendor having a verified account on a marketplace; could not only provide certificates of ownership of said physical items to their customers, i.e. NFTs, but can also ensure these physical items are of true origin and belong to the vendor's own authentic make or brand, as such customers trusting a certain online marketplace denoting that a certain vendor's account is a true trusted account legitimately representing a specific brand, makes buying pNFT-enabled products from said vendor's account a true sign of said products genuinity; as only said vendor could have minted products' pNFT tokens at time of produce and release to markets via said online marketplace, Kalaldeh ¶147-¶149).
As per claim 9, Kaladeh and Spivack disclose as shown above with respect to claim 1. Kaladeh further discloses wherein the metadata of the digital twin NFT further includes digital content of the physical item (minted non-fungible token (NFT), Kalaldeh ¶11-¶12; Then the (p) fingerprint signature establishes a secure permanent connection between NFTs and physical assets (i.e. pNFT=Asset Fingerprint (p)+ NFT) and that's why the (p) beholds the code that enables collectors to verify received physical assets received against their pNFT tokens. pNFTs created for all kind of assets now can be truly be owned in a trustless, decentralized manner, ¶115).
As per claim 10, Kaladeh and Spivack disclose as shown above with respect to claim 9. Kaladeh further discloses wherein the digital content of the physical item comprises at least one of an image of the physical item, a video of the physical item, or a 3D model of the physical item (magnification lens apparatus, Kalaldeh ¶32; wireless camera reading device, ¶75; on to a smart phone camera, ¶80-81; user create, read and verify pNFTs, with required software app, ¶28; user-friendly pictorial illustration, ¶115).
As per claim 11, Kaladeh and Spivack disclose as shown above with respect to claim 1. Kaladeh further discloses wherein the metadata of the digital twin NFT further includes a location where the digital twin NFT was minted (product origin, Kaladeh ¶199).
As per claims 12-13, Kaladeh and Spivack disclose as shown above with respect to claim 1. Kaladeh further discloses wherein the condition of the physical item comprises an indication that the physical item is new or used (transfer ownership to someone else, Kaladeh ¶145 and ¶178) (Examiner notes that the transferring between owners as the item becoming or being used).
Furthermore, under MPEP 2144.04, any differences related merely to the meaning and information conveyed through labels (i.e. an item being “used’) which does not explicitly alter or impact the functionality of the claimed invention, does not patentably distinguish the claimed invention from the prior art in terms of patentability.
As per claims 17-18, and 21, Kaladeh and Spivack disclose as shown above with respect to claims 1 and 15. Kaladeh further discloses wherein the operations further comprise comprising outputting a fingerprinting interface that includes instructions for capturing the one or more features of the physical item, and wherein the one or more features of the physical item are captured using the fingerprint capture system according to the instructions included in the fingerprinting interface (magnification lens apparatus, Kalaldeh ¶32; wireless camera reading device, ¶75; on to a smart phone camera, ¶80-81; user create, read and verify pNFTs, with required software app, ¶28; user-friendly pictorial illustration, ¶115).
Claims 3-5 and 14 is/are rejected under 35 U.S.C. 103 as being unpatentable over Kalaldeh et al. (US PG Pub. 2023/0045071) and Spivack et al. (US 2020/0273048) further in view of Andon et al. (US 2020/0273048).
As per claim 3, Kaladeh and Spivack as shown above with respect to claim 2. Kalaldeh and Spivack do not expressly disclose wherein the condition of the physical item can change over time
However, Andon teaches wherein the condition of the physical item can change over time (For at least some implementations, a CryptoKick may be programmed to function as a “living” digital pet that the user feeds, cleans, entertains and otherwise cares for to ensure the pet is happy and healthy. Optionally, an owner can either care for the CryptoKick pet by him/herself or have a third-party user care for the CryptoKick pet. As the CryptoKick pet evolves—growing from a baby digital pet to a toddler, then preschooler, and so forth to adulthood—one or more attributes of the CryptoKick automatically change with age or are unlocked over time. Furthermore, as the CryptoKick pet “grows” through various life stages, it may unlock a real-life shoe version of itself that a user can have made. For example, if a CryptoKick pet has evolved into a royal blue athletic shoe for a toddler, the user has unlocked the option to buy a special royal blue athletic shoe in one or more toddler sizes, Andon ¶59; age of asset, activity, ¶78).
The Spivack, Kalaldeh and the Andon references are analogous in that both are directed towards/concerned with the creation and management of non-fungible tokens (NFTs). Before the effective filing date of the claimed invention, it would have been obvious to a person of ordinary skill in the art to use Andon’s method of NFT management in Spivack and Kalaldeh’s system to improve the system and method with reasonable expectation that this would result in a non-fungible tokens (NFTs) management system that is able to track authenticity with anti-counterfeiting techniques.
The motivation being that market participants and brand enthusiasts in a free market typically assign a higher value to an object if there is limited supply and/or if there is excess demand for that object. While these realities are obvious in the physical real world (particularly to an avid collector), similar market realities also exist within a digital realm. With the proliferation of first and third person video games involving customizable skins, apparel, and gear, there exists an opportunity to engage and influence users in the digital realm via collectable objects so that they may be more engaged with a brand in the physical world. Likewise, there exists a need for a retailer to more directly influence and/or control the nature and ultimate supply of digital objects within this virtual market (Andon ¶5).
As per claim 4, Kaladeh and Spivack as shown above with respect to claim 1. Kalaldeh and Spivack do not expressly disclose wherein the condition of the physical item is generated based on the one or more features of the physical item.
However, Andon teaches wherein the condition of the physical item is generated based on the one or more features of the physical item (For at least some implementations, a CryptoKick may be programmed to function as a “living” digital pet that the user feeds, cleans, entertains and otherwise cares for to ensure the pet is happy and healthy. Optionally, an owner can either care for the CryptoKick pet by him/herself or have a third-party user care for the CryptoKick pet. As the CryptoKick pet evolves—growing from a baby digital pet to a toddler, then preschooler, and so forth to adulthood—one or more attributes of the CryptoKick automatically change with age or are unlocked over time. Furthermore, as the CryptoKick pet “grows” through various life stages, it may unlock a real-life shoe version of itself that a user can have made. For example, if a CryptoKick pet has evolved in