DETAILED ACTION
Status of Claims
The following is a final office action in response to the amendment filed December 7, 2023. Claims 1-32 are currently pending and have been examined.
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 .
Response to Arguments
The rejection under 35 USC 101 has been withdrawn.
Regarding claims 1, 16, 31, and 32, Applicant's prior art arguments have been considered but are moot in view of the new ground(s) of rejection.
Regarding claims 6 and 21, Applicant's prior art arguments have been fully considered but they are not persuasive.
Applicant contends that Madhusudhan does not disclose generating a listing for the physical object as a result of determining the wallet owns the digital asset. Madhusudhan, though does indeed teach generating a listing for the physical object as a result of determining the wallet owns the digital asset (Madhusudhan: paragraph [0074] - The mobile device 350 may receive data related to NFT listing and transactions via an input/output path 352, paragraph [0064] - A buyer can buy the NFT (associated with the physical object) from a listed marketplace and can validate the physical asset by scanning the QR code fixed with the physical asset.). Madhusudhan thereby teaches the claimed limitation.
Claim Rejections - 35 USC § 103
The following is a quotation of 35 U.S.C. 103 which forms the basis for all obviousness rejections set forth in this Office action:
A patent for a claimed invention may not be obtained, notwithstanding that the claimed invention is not identically disclosed as set forth in section 102 of this title, 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(a) 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 1-6, 7, 10-19, 21, and 25-32 are rejected under 35 U.S.C. 103 as being unpatentable over Madhusudhan et al (US 2023/0070389 A1) in view of Pene (US 2023/0334472).
Regarding claims 1, 16, 31, and 32, Madhusudhan discloses computer-implemented method for transferring rights to a physical object with a digital asset, the method comprising:
obtaining a wallet identifier associated with a seller of the physical object (Madhusudhan: paragraph [011] - The system may help store the NFT in a wallet associated with the creator and allow transferring of the NFT from one owner to another.);
receiving, from a computing device, an identifier associated with the physical object, wherein the identifier is obtained by the computing device scanning the physical object (Madhusudhan: paragraph [0052] - The user device 110 may scan the QR code 116 or NFC tag 118 attached with the physical asset 114 and include a unique identifier read from QR code 116 or NFC tag 118 as part of the media file being created);
determining a wallet associated with the wallet identifier that owns the digital asset linked to the physical object (Madhusudhan: paragraph [011] - The system may help store the NFT in a wallet associated with the creator and allow transferring of the NFT from one owner to another.).
determining the physical object is authentic (Madhusudhan: paragraph [0007] - An object of the present invention is to provide a platform for validating the authenticity of a physical asset associated with an NFT);
transferring one or more rights to the physical object and the digital asset to a buyer (Madhusudhan: paragraph [0050] - Each digital asset not only holds a uniquely identifying NFT but also holds associated rights with it, and any transfer of NFT leads to the transfer of these rights also).
Madhusudhan does not expressly disclose receiving a signature of the wallet, wherein the signature indicates that the seller owns the wallet. Pene discloses receiving a signature of the wallet, wherein the signature indicates that the seller owns the wallet (Pene: see paragraph [0022] - obtaining a user input indicative of a cryptographic signature associated with the digital wallet address of the user, wherein the cryptographic signature corresponds to the user signing the smart contract; and automatically generating the NFT based on verifying the transaction information for the first selected item and based on verifying the cryptographic signature associated with the digital wallet address of the user).
It would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to have modified the method and apparatus of Madhusudhan to have included receiving a signature of the wallet, wherein the signature indicates that the seller owns the wallet, as taught by Pene because it would allow for tracking of ownership (Pene: paragraph [0037]).
Regarding claims 2 and 17, Madhusudhan and Pene teach or suggest all the limitations of claims 1 and 16 as noted above. Madhusudhan and Pene do not expressly disclose wherein the rights transferred to the buyer include one or more of: ownership rights, fractional ownership rights, temporary ownership rights, leasing, and renting. However these differences are only found in the nonfunctional descriptive material and are not functionally involved in the steps recited. The steps would be performed the same regardless of the type of rights. This descriptive material will not distinguish the claimed invention from the prior art in terms of patentability, see In re Gulack, 70 F.2d 1381, 1385, 217 USPQ 401 (Fed. Cir. 1983); In re Lowry, 32 F.3d 1579, 32 USPQ2d 1031 (Fed. Cir. 1994).
Regarding claims 3 and 18, Madhusudhan and Pene teach or suggest all the limitations of claims 1 and 16 as noted above. Madhusudhan further discloses wherein the physical object includes a near-field communication (NFC) chip and the identifier is obtained by the computing device scanning the NFC chip of the physical object (Madhusudhan: paragraph [0052] - The user device 110 may scan the QR code 116 or NFC tag 118 attached with the physical asset 114 and include a unique identifier read from QR code 116 or NFC tag 118 as part of the media file being created).
Regarding claims 4 and 19, Madhusudhan and Pene teach or suggest all the limitations of claims 3 and 18 as noted above. Madhusudhan further discloses wherein determining the physical object is authentic comprises: receiving an authentication message indicating the physical object includes the NFC chip, wherein the authentication message was transmitted by the buyer or a third party (Madhusudhan: Figure 5).
Regarding claims 6 and 21, Madhusudhan and Pene teach or suggest all the limitations of claims 1 and 16 as noted above. Madhusudhan further discloses generating a listing for the physical object as a result of determining the wallet owns the digital asset (Madhusudhan: paragraph [0074] - The mobile device 350 may receive data related to NFT listing and transactions via an input/output path 352, paragraph [0064] - A buyer can buy the NFT from a listed marketplace and can validate the physical asset by scanning the QR code fixed with the physical asset.).
Regarding claims 7 and 22, Madhusudhan and Pene teach or suggest all the limitations of claims 6 and 21 as noted above. Madhusudhan further discloses moving the digital asset into an escrow wallet account or receiving an indication of a right to transfer smart contract related to the NFT (Madhusudhan: paragraph [0048] -For performing all these transactions, the user requires a proper marketplace platform where a listing of tokens takes place using a smart contract).
Regarding claims 8 and 23, Madhusudhan and Pene teach or suggest all the limitations of claims 7 and 22 as noted above. Madhusudhan further discloses receiving a purchasing message transmitted from the buyer, wherein the purchasing message indicates the listing; and receiving a funds message, wherein the funds message indicates monetary funds were received by an escrow account or a transfer of funds smart contract was signed by the buyer (Madhusudhan: Figure 5).
Regarding claims 11 and 26, Madhusudhan and Pene teach or suggest all the limitations of claims 1 and 16 as noted above. Madhusudhan further discloses receiving a validation message, wherein the validation message indicates the seller has possession of the physical object (Madhusudhan: Figure 5).
Regarding claims 12 and 27, Madhusudhan and Pene teach or suggest all the limitations of claims 11 and 26 as noted above. . Madhusudhan further discloses wherein the rights are transferred as a result of receiving the validation message (Madhusudhan: Figure 5).
Regarding claims 13 and 28, Madhusudhan and Pene teach or suggest all the limitations of claims 1 and 16 as noted above. . Madhusudhan further discloses wherein the cryptographic token is a non-fungible token (NFT) (Madhusudhan: paragraph [0010] - A system, method, and platform for creating NFT for a physical asset and validating the authenticity of a physical asset are described).
Regarding claims 14 and 29, Madhusudhan and Pene teach or suggest all the limitations of claims 13 and 28 as noted above. Madhusudhan further discloses wherein the cryptographic token is a non-fungible token (NFT) (Madhusudhan: paragraph [0010] - A system, method, and platform for creating NFT for a physical asset and validating the authenticity of a physical asset are described).
Regarding claims 15 and 30, Madhusudhan and Pene teach or suggest all the limitations of claims 1 and 16 as noted above. Madhusudhan does not expressly disclose wherein the physical object is one or more of: footwear, apparel, art, equipment, an event ticket, and a functional asset. However these differences are only found in the nonfunctional descriptive material and are not functionally involved in the steps recited. The steps would be performed the same regardless of the type of physical object. This descriptive material will not distinguish the claimed invention from the prior art in terms of patentability, see In re Gulack, 70 F.2d 1381, 1385, 217 USPQ 401 (Fed. Cir. 1983); In re Lowry, 32 F.3d 1579, 32 USPQ2d 1031 (Fed. Cir. 1994).
Claim Rejections - 35 USC § 103
The following is a quotation of 35 U.S.C. 103 which forms the basis for all obviousness rejections set forth in this Office action:
A patent for a claimed invention may not be obtained, notwithstanding that the claimed invention is not identically disclosed as set forth in section 102 of this title, 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(a) 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 9, 10, 24, and 25 are rejected under 35 U.S.C. 103 as being unpatentable over Madhusudhan et al (US 2023/0070389 A1), in view of Pene (US 2023/0334472), and further in view of Figge et al (US 20240096070A1).
Regarding claims 9 and 24, Madhusudhan and Pene teach or suggest all the limitations of claims 8 and 23 as noted above. The combination of Madhusudhan and Pene does not disclose determining a quality of the physical object; and determining whether the quality of the physical object satisfies a quality threshold or the quality matches a description of the physical object. However, Figge teaches determining a quality of the physical object; and determining whether the quality of the physical object satisfies a quality threshold or the quality matches a description of the physical object (Figge: paragraph [0015] - The system can inspect one or more of the images to verify attributes and traits of the images meet a quality/accuracy threshold. When the images meet the quality threshold, the system can execute a script to perform the verification steps on other images to provide confirmation that the images meet the quality threshold).
It would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to include the combination of Madhusudhan and Pene, in the apparatus and method for determining a quality of the physical object; and determining whether the quality of the physical object satisfies a quality threshold or the quality matches a description of the physical object, as taught by Figge since the claimed invention is just a combination of old elements, and in the combination each element merely would have performed that same function as it did separately, and one of ordinary skill in the art would have recognized that the results of the combination were predictable. One of ordinary skill in the art would have been motivated to do so because it would prevent the user from having to manually inspect (Figge: paragraph [0017]).
Regarding claims 10 and 25, Madhusudhan, Pene, and Figge teach or suggest all the limitations of claims 9 and 24 as noted above. Figge further discloses wherein determining the quality of the physical object comprises analyzing one or more images of the physical object using a machine learning model (Figge: paragraph [0015] - The system can inspect one or more of the images to verify attributes and traits of the images meet a quality/accuracy threshold. When the images meet the quality threshold, the system can execute a script to perform the verification steps on other images to provide confirmation that the images meet the quality threshold, Figure 9 – machine learning module 950).
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 extension fee 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 date of this final action.
Any inquiry concerning this communication or earlier communications from the examiner should be directed to KATHLEEN G PALAVECINO whose telephone number is (571)270-1355. The examiner can normally be reached M-F 9-4.
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KATHLEEN GAGE PALAVECINO
Primary Examiner
Art Unit 3688
/KATHLEEN PALAVECINO/Primary Examiner, Art Unit 3688