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 .
Claim Status
As of the Office Action dated May 20, 2025, claims 1-3, 6-7 and 10 were pending and claims 1-3, 6-7 and 10 stood rejected. Claims 1-10 have been rejected and claims 11-18 have been added. Claims 11-18 are therefore currently pending and are presented for examination on the merits.
Response to Arguments
Applicant’s argument with regard to the 35 U.S.C. § 101 rejection of the claims has been fully considered but is not persuasive. Accordingly the rejection is being maintained.
Applicant’s argument with regard to the 35 U.S.C. § 112 rejection of the claims has been fully considered but is not persuasive. While the cited paragraphs may support the language of the claim the description of the invention is itself deficient both in terms of a computer-implemented invention (MPEP § 2161.01) and one that invokes 35 U.S.C. § 112 (f) per MPEP § 2181. Accordingly the rejection is being maintained.
Applicant’s argument with regard to the 35 U.S.C. § 103 rejection of the claims as being unpatentable over Bettati has been fully considered but are moot because the new ground of rejection does not rely on any reference applied in the prior rejection of record for any teaching or matter specifically challenged in the argument.. Examiner would respectfully point out that the claim does not state that a decryption key is “purchaser-specific” as the claim recites “decryption information” which is broader in scope than a purchaser-specific decryption key and limitations from the written disclosure that are not actually claimed are not read into the claim.
Claim Interpretation
The following is a quotation of 35 U.S.C. 112(f):
(f) Element in Claim for a Combination. – An element in a claim for a combination may be expressed as a means or step for performing a specified function without the recital of structure, material, or acts in support thereof, and such claim shall be construed to cover the corresponding structure, material, or acts described in the specification and equivalents thereof.
The following is a quotation of pre-AIA 35 U.S.C. 112, sixth paragraph:
An element in a claim for a combination may be expressed as a means or step for performing a specified function without the recital of structure, material, or acts in support thereof, and such claim shall be construed to cover the corresponding structure, material, or acts described in the specification and equivalents thereof.
The claims in this application are given their broadest reasonable interpretation using the plain meaning of the claim language in light of the specification as it would be understood by one of ordinary skill in the art. The broadest reasonable interpretation of a claim element (also commonly referred to as a claim limitation) is limited by the description in the specification when 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph, is invoked.
As explained in MPEP § 2181, subsection I, claim limitations that meet the following three-prong test will be interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph:
(A) the claim limitation uses the term “means” or “step” or a term used as a substitute for “means” that is a generic placeholder (also called a nonce term or a non-structural term having no specific structural meaning) for performing the claimed function;
(B) the term “means” or “step” or the generic placeholder is modified by functional language, typically, but not always linked by the transition word “for” (e.g., “means for”) or another linking word or phrase, such as “configured to” or “so that”; and
(C) the term “means” or “step” or the generic placeholder is not modified by sufficient structure, material, or acts for performing the claimed function.
Use of the word “means” (or “step”) in a claim with functional language creates a rebuttable presumption that the claim limitation is to be treated in accordance with 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph. The presumption that the claim limitation is interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph, is rebutted when the claim limitation recites sufficient structure, material, or acts to entirely perform the recited function.
Absence of the word “means” (or “step”) in a claim creates a rebuttable presumption that the claim limitation is not to be treated in accordance with 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph. The presumption that the claim limitation is not interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph, is rebutted when the claim limitation recites function without reciting sufficient structure, material or acts to entirely perform the recited function.
Claim limitations in this application that use the word “means” (or “step”) are being interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph, except as otherwise indicated in an Office action. Conversely, claim limitations in this application that do not use the word “means” (or “step”) are not being interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph, except as otherwise indicated in an Office action.
This application includes one or more claim limitations that do not use the word “means,” but are nonetheless being interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph, because the claim limitation(s) uses a generic placeholder that is coupled with functional language without reciting sufficient structure to perform the recited function and the generic placeholder is not preceded by a structural modifier. Such claim limitation(s) is/are: “encryption information adding module” in claim 12 and “login processing module” in claim 17.
Because this/these claim limitation(s) is/are being interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph, it/they is/are being interpreted to cover the corresponding structure described in the specification as performing the claimed function, and equivalents thereof.
If applicant does not intend to have this/these limitation(s) interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph, applicant may: (1) amend the claim limitation(s) to avoid it/them being interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph (e.g., by reciting sufficient structure to perform the claimed function); or (2) present a sufficient showing that the claim limitation(s) recite(s) sufficient structure to perform the claimed function so as to avoid it/them being interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph.
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 11-18 are rejected under 35 U.S.C. 101 because the claimed invention is directed to an abstract idea without significantly more.
Claim 11 recites an information management system and is ostensibly directed towards an apparatus and for discussion purposes will be treated here as though Step 1 is met (MPEP § 2106.03). The analysis then proceeds to Prong One of Step 2A where the claim is analyzed in order to determine whether the claim is directed towards an abstract idea (MPEP § 2106.04 (II)(A)). The claim recites adding encrypted confidential information to an NFT and storing the NFT in a user page of a purchaser who purchased the NFT. Notably the claim is not claiming the operation of encryption but only the addition of encrypted confidential information to an NFT and storing the information. A recitation is made that the encrypted confidential information can be viewed only when it is decrypted by using decryption information given to the purchaser who purchased the NFT. The operations can be viewed as reading on a mental process as information can be added to paper document in whatever form taken and the document can be stored and at a later time the encrypted confidential information can be viewed when it is decrypted using provided information. The fact that a computer may be required given the particular form of an NFT does not negate the finding that the operations involve a mental process (MPEP § 2106.04(a)(2)(III)(C)(3)) as it has been held that using a computer as a tool to perform a mental process when the operations are recited at a high level of generality and the computer is merely being used as a tool to perform the operations. Therefore under Prong One of Step 2A the claim is held as being ineligible.
The analysis then proceeds to Prong Two of Step 2A in order to determine whether the claim integrates the abstract idea into a practical application (MPEP § 2106.04(d)). The claim recites elements of a management server, a database, an encryption information adding module, a user interface, a recitation that the system is configured to add encrypted confidential information that is provided based on a purchaser’s operation through a user interface to the NFT, the storing of the NFT and a recitation that the encrypted confidential information can be viewed only when it is decrypted by using decrypted information. No improvement to the functioning of a computer is recited in the claim as the written disclosure merely describes obtained results (MPEP § 2106.05 (a)(I)) nor is there an improvement to another technology or technological field (MPEP § 2106.05 (a)(II)). The claim does not apply or use the abstract idea in any meaningful way beyond generally linking the use of the abstract idea to a particular technological environment as the claim only recites the idea of a solution or outcome but does not describe any details as to how a solution to a problem is accomplished (MPEP § 2106.05(f)(1). Therefore under Prong Two of Step 2A the claim is held as being ineligible.
The analysis then proceeds to Step 2B where the claim is evaluated as to whether the claim amounts to significantly more than the abstract idea (MPEP § 2106.05). The claim recites elements of a management server, a database, an encryption information adding module, a user interface, a recitation that the system is configured to add encrypted confidential information that is provided based on a purchaser’s operation through a user interface to the NFT, the storing of the NFT and a recitation that the encrypted confidential information can be viewed only when it is decrypted by using decrypted information. No improvement to the functioning of a computer is recited in the claim as the written disclosure merely describes obtained results (MPEP § 2106.05 (a)(I)) nor is there an improvement to another technology or technological field (MPEP § 2106.05 (a)(II)). The claim does not apply or use the abstract idea in any meaningful way beyond generally linking the use of the abstract idea to a particular technological environment as the claim only recites the idea of a solution or outcome but does not describe any details as to how a solution to a problem is accomplished (MPEP § 2106.05(f)(1). Therefore under Step 2B the claim is held as being ineligible.
Dependent claims 12 and 13 do not recite any additional elements and only provide further descriptions of the data used in the abstract idea. Therefore claims 2 and 3 are also held as being directed towards an abstract idea and do not contain either a practical application or an inventive concept that would confer eligibility under section 101.
Dependent claim 17 recites an additional element of a login processing module configured to accept login information from a user and to allow the user to view the confidential information only when the login is successful. No improvement to the functioning of a computer is recited in the claim as the written disclosure merely describes obtained results (MPEP § 2106.05 (a)(I)) nor is there an improvement to another technology or technological field (MPEP § 2106.05 (a)(II)). The claim does not apply or use the abstract idea in any meaningful way beyond generally linking the use of the abstract idea to a particular technological environment as the claim only recites the idea of a solution or outcome but does not describe any details as to how a solution to a problem is accomplished (MPEP § 2106.05(f)(1). Therefore under Prong Two of Step 2A and Step 2B the additional element is both insufficient to form a practical application of the abstract idea under Prong Two of Step 2A and an inventive concept under Step 2B and is also held as being ineligible.
Claims 14-16 and 18 are directed towards the program used in the system of claims 11-13 and 17 and under the same analysis would also be held as ineligible under section 101. Therefore claims 14-16 and 18 are also held as being directed towards ineligible subject matter under section 101.
Claim Rejections - 35 USC § 112
The following is a quotation of the first paragraph of 35 U.S.C. 112(a):
(a) IN GENERAL.—The specification shall contain a written description of the invention, and of the manner and process of making and using it, in such full, clear, concise, and exact terms as to enable any person skilled in the art to which it pertains, or with which it is most nearly connected, to make and use the same, and shall set forth the best mode contemplated by the inventor or joint inventor of carrying out the invention.
The following is a quotation of the first paragraph of pre-AIA 35 U.S.C. 112:
The specification shall contain a written description of the invention, and of the manner and process of making and using it, in such full, clear, concise, and exact terms as to enable any person skilled in the art to which it pertains, or with which it is most nearly connected, to make and use the same, and shall set forth the best mode contemplated by the inventor of carrying out his invention.
Claims 11-13 and 17 are rejected under 35 U.S.C. 112(a) or 35 U.S.C. 112 (pre-AIA ), first paragraph, as failing to comply with the written description requirement. The claim(s) contains subject matter which was not described in the specification in such a way as to reasonably convey to one skilled in the relevant art that the inventor or a joint inventor, or for applications subject to pre-AIA 35 U.S.C. 112, the inventor(s), at the time the application was filed, had possession of the claimed invention.
Claim 11 recites “…an encryption information adding module” which is also recited in claim 12. The term is not recited in the written disclosure. While subject matter within a claim need not be described literally (i.e., using the same terms or in haec verba) in order for the disclosure to satisfy the description requirement (MPEP § 2163.02), the written disclosure only recites the operation of encryption in a general sense (such as at paragraphs 0030, 0035 and 0041-0044) but does not describe this operation as being part of any structure that could be viewed as an encryption information adding module and therefore must be held as being directed towards the introduction of new subject matter. Furthermore as the claim is directed towards a computer implemented invention (MPEP § 2161.01) the written disclosure must explain both the computer and the algorithm that perform the claimed function in sufficient detail such that one of ordinary skill can reasonably conclude that the inventor possessed the claimed subject matter at the time of filing. However it is clear in reading the cited paragraphs that the written disclosure does no more than specify a desired result but does not sufficiently describe how the function is performed or the result is achieved. Therefore even if an argument were made that the term itself is supported by the written disclosure the description of the encryption information adding module must be held as insufficient as there is no description of the composition of the module itself including a description of the encryption algorithm or algorithms forming the module and a clear recitation of the structure used to implement the algorithm. Even if paragraphs 0042-0044 and Figures 3, 4, 5 and 6A, which reference the use of a commercially available product, were viewed as sufficient to describe a particular implementation of encryption via a Word® document product feature this would represent a situation where a single species is described and a genus is claimed where the written description does not support any implementation other than the species and would therefore also be an insufficient written description per MPEP § 2161.01 because of the breadth of the claim limitation and the lack of support in the written description to support the entire breadth of the claim. Therefore claims 11 and 12 are held as lacking insufficient written description under 35 U.S.C. § 112 (a).
Claim 17 recites “…a login processing module”. The term is not recited in the written disclosure. While subject matter within a claim need not be described literally (i.e., using the same terms or in haec verba) in order for the disclosure to satisfy the description requirement (MPEP § 2163.02), the written disclosure only recites the operation of logging in in a general sense (such as at paragraphs 0041 and 0047-0049) but does not describe this operation as being part of any structure that could be viewed as a login processing module and therefore must be held as being directed towards the introduction of new subject matter. Furthermore as the claim is directed towards a computer implemented invention (MPEP § 2161.01) the written disclosure must explain both the computer and the algorithm that perform the claimed function in sufficient detail such that one of ordinary skill can reasonably conclude that the inventor possessed the claimed subject matter at the time of filing. However it is clear in reading the cited paragraphs that the written disclosure does no more than specify a desired result but does not sufficiently describe how the function is performed or the result is achieved. Therefore even if an argument were made that the term itself is supported by the written disclosure the description of the login processing module must be held as insufficient as there is no description of the composition of the module itself including a description of the algorithm or algorithms forming the module and a clear recitation of the structure used to implement the algorithm. Even if paragraphs 0041 and 0047-0049 and Figures 3, 8, 9A and 9B were viewed as sufficient to describe a particular implementation of logging into a particular platform this would represent a situation where a single species is described and a genus is claimed where the written description does not support any implementation other than the species and would therefore also be an insufficient written description per MPEP § 2161.01 because of the breadth of the claim limitation and the lack of support in the written description to support the entire breadth of the claim. Therefore claim 17 is held as lacking insufficient written description under 35 U.S.C. § 112 (a).
Claims 12-13 and 17 are also rejected as being dependent upon claim 11.
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 12 and 17 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.
Claim 12 recites “…wherein the encryption information adding module adds new confidential information in a state where the confidential information already added is retained based on the control by the purchaser who purchased the NFT” where the language has been interpreted as having invoked 35 U.S.C. § 35 U.S.C. 112 (f). The term “encryption information adding module” is not recited in the written disclosure. The written disclosure only recites the operation of encryption in a general sense (such as at paragraphs 0030, 0035 and 0041-0044) but does not describe this operation as being part of any structure that could be viewed as an encryption information adding module and therefore must be held as being indefinite as MPEP § 2181(II)(A) and (B) require that the written disclosure explain both the structure and the algorithm that perform the claimed function in sufficient detail such that one of ordinary skill can reasonably conclude that the inventor possessed the claimed subject matter at the time of filing. However it is clear in reading the cited paragraphs that the written disclosure does no more than specify a desired result but does not sufficiently describe how the function is performed or the result is achieved as there is no description of the composition of the module itself including a description of the encryption algorithm or algorithms forming the module and a clear recitation of the structure used to implement the algorithm. Even if paragraphs 0042-0044 and Figures 3, 4, 5 and 6A, which reference the use of a commercially available product, were viewed as sufficient to describe a particular implementation of encryption via a Word® document product feature this would represent a situation where a single species is described and one of ordinary skill would not be able to understand whether this is the complete extent of the potential structure and make the boundaries of the claim understandable. Therefore claim 12 is held as being indefinite under 35 U.S.C. § 112 (b).
Claim 17 recites “…a login processing module configured to accept login information from a user and to allow the user to view the confidential information only when the login is successful” where the language has been interpreted as having invoked 35 U.S.C. § 35 U.S.C. 112 (f). The term “login processing module” is not recited in the written disclosure and only describes the function of logging in in a general sense (such as at paragraphs 0041 and 0047-0049 and Figures 3, 8, 9A and 9B) but does not describe this operation as being part of any structure that could be viewed as a login processing module and therefore must be held as being indefinite as MPEP § 2181(II)(A) and (B) require that the written disclosure explain both the structure and the algorithm that perform the claimed function in sufficient detail such that one of ordinary skill can reasonably conclude that the inventor possessed the claimed subject matter at the time of filing. However it is clear in reading the cited paragraphs that the written disclosure does no more than specify a desired result and does not sufficiently describe how the function is performed or the result is achieved as there is no description of the composition of the module itself including a description of the login processing algorithm or algorithms forming the module and a clear recitation of the structure used to implement the algorithm. Even if paragraphs 0041 and 0047-0049 and Figures 3, 8, 9A and 9B were viewed as sufficient to describe a particular implementation of login processing one of ordinary skill would not be able to understand whether this is the complete extent of the potential structure and make the boundaries of the claim understandable. Therefore claim 17 is held as being indefinite under 35 U.S.C. § 112 (b).
Claim Rejections - 35 USC § 102
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 the appropriate paragraphs of 35 U.S.C. 102 that form the basis for the rejections under this section made in this Office action:
A person shall be entitled to a patent unless –
(a)(2) the claimed invention was described in a patent issued under section 151, or in an application for patent published or deemed published under section 122(b), in which the patent or application, as the case may be, names another inventor and was effectively filed before the effective filing date of the claimed invention.
Claims 11-16 are rejected under 35 U.S.C. 102(a)(2) as being anticipated by Bettati et al. (U.S. Patent Publication 2024/0193567, hereinafter referred to as Bettati).
As per claims 11 and 14
Bettati discloses a management server ([0084] The secure client interface may enable the following: [0085] to browse a blockchain, to search for:… [0088] digital content NFTs: preview, metadata and associated digital wallet; [0089] hardware NFTs: preview, metadata and associated digital wallet. [0090] authors/producers to register new content/devices. [0091] end-users to request and/or buy NFTs”)
Bettati discloses a database ([0085] to browse a blockchain, to search for:… [0088] digital content NFTs: preview, metadata and associated digital wallet;)
Bettati discloses an encryption adding module (0095 “Hence, the system automatically…encrypt the digital asset”)
Bettati discloses a user interface ([0084] The secure client interface may enable the following: [0085] to browse a blockchain”)
Bettati discloses the system being configured to add encrypted confidential information ([0014] “at one or more processors: encrypting a digital asset via the public key of the device, and linking or associating the encrypted digital asset to a non-fungible token (NFT), in which the NFT is associated with a smart contract written on the blockchain”, [0095] “Hence, the system automatically retrieves requests related to digital assets, check that all the trading conditions are met for each request, retrieve the public keys of the corresponding devices, and encrypt the digital asset. Accordingly, a link to download the NFTs and any other useful information or metadata may be provided”)
which is at least one of text data, voice data, video data, or still image data associated with a specific product (0124 “The author of the digital asset may also add his own signature to the artwork as a mark for its authenticity, and other useful metadata. NFT may also be associated with a download link for downloading the encrypted digital content. The download link may also include metadata such as a digital signature”, 0151 “With the proposed flow, the hybrid key may be built as follows: the original digital asset is encrypted by the digital asset designer via a symmetric key, then this symmetric key is encrypted via the asymmetric, public key of the receiving hardware (that has been previously registered on the blockchain). The encrypted symmetric key is referred to as the hybrid key”, 0152 “When the conditions of the smart contract are met, the receiving device receives 1) the encrypted symmetric key (i.e. the hybrid key) and 2) the digital asset code encrypted with the symmetric key”, 0189 “The metadata associated with the NFT of the main code may include the requested libraries to have the firmware code working, as well as their author signature. The addition of the signature can represent a deterrent for malware libraries, which may for instance have disruptive effects on the code or try to divert the decrypted code outside the SoC, as the usage of a specific library within a code is recorded on the blockchain”) and pro
and provided based on a purchaser’s operation through a user interface, to the NFT associated with the specific product (0124 “The author of the digital asset may also add his own signature to the artwork as a mark for its authenticity, and other useful metadata. NFT may also be associated with a download link for downloading the encrypted digital content. The download link may also include metadata such as a digital signature”, 0151 “With the proposed flow, the hybrid key may be built as follows: the original digital asset is encrypted by the digital asset designer via a symmetric key, then this symmetric key is encrypted via the asymmetric, public key of the receiving hardware (that has been previously registered on the blockchain). The encrypted symmetric key is referred to as the hybrid key”, 0152 “When the conditions of the smart contract are met, the receiving device receives 1) the encrypted symmetric key (i.e. the hybrid key) and 2) the digital asset code encrypted with the symmetric key”, 0189 “The metadata associated with the NFT of the main code may include the requested libraries to have the firmware code working, as well as their author signature. The addition of the signature can represent a deterrent for malware libraries, which may for instance have disruptive effects on the code or try to divert the decrypted code outside the SoC, as the usage of a specific library within a code is recorded on the blockchain”)
Bettati discloses wherein the NFT is stored in a user page of a purchaser who purchased the NFT provided on a network (0068 “FIG. 1 shows a high-level overview of the architecture of a verified hardware, such as a System-on-a-Chip (SoC) that is configured to request and receive a digital asset when the requirements of the smart contract are met. The SoC comprises the following blocks: a key generator 17, an integrated digital wallet 11, an encrypting and decrypting unit 12, a first storage medium 13, and a second storage medium 14. The SoC is equipped with a connection to the blockchain, for example achieved via a secure client interface 15”, 0075 “A digital wallet 11, i.e., a permanent and unchanging area of memory where the public and private keys are stored”, 0076 “A decrypting unit 12: to access digital content encrypted with the SoC public key” and claim 59 in conjunction with claim 70) (Examiner deems that given the absence of any structural description of a “user page” in the written disclosure that a digital wallet for holding the NFTs meets the broadest reasonable interpretation of the term)
Bettati discloses the encrypted confidential information can be viewed only when it is decrypted by using decryption information given to the purchaser who purchased the NFT (0097 “In the example shown in FIG. 2, the digital asset is an artwork, and the verified or receiving hardware is a digital frame (e.g., smart TV) that is configured to display the artwork. The workflow presented may generally be extended to the transaction and handling of any other digital assets, such as firmware, documents, messages, videos, music, or any other digital content”, 0019 “at the device: requesting access to the NFT-linked digital asset; receiving the NFT-linked digital asset and the hybrid key when the requirements of the smart contract are met; and decrypting the hybrid key using the private key and decrypting the NFT-linked digital asset using the symmetric key”, 0047 “An example is when NFT-based artworks (e.g., pictures, music, or any other document redeemable with an NFT transaction) are shared between a phone or PC that has purchased the item and a connected digital device such as a monitor, a digital frame, or a Bluetooth speaker”, 0048 “Once a digital asset is decrypted to be used on a physical device (i.e., the smartphone linked to the wallet which has purchased the digital asset), the digital asset may move outside of the device's memory and may be reproduced (i.e., converted into a visual information on a screen in case of an artwork)”)
As per claims 12 and 15
Bettati discloses the encryption information adding module adds new confidential information in a state where the confidential information already added is retained based on the control by the purchaser who purchased the NFT (0113 “Independently from hardware trading, the creator of a digital asset to be traded may load a preview of the digital content on the NFT marketplace to be disclosed to possible buyers. The preview may contain only a portion of the digital asset. The artist or creator may also publish trading conditions for selling the digital asset on the blockchain via the use of a smart contract”, 0114 “As an example, a transaction may be based on the exchange of a crypto token with another token or fungible cryptocurrency that has an economic value (an NFT from the creator, a corresponding cryptocurrency fee, or another token to prove the exchange from the receiver)”, 0132 “As an example, when an artwork needs to be moved from a first digital frame to a second digital frame, the artwork is transferred again in an encrypted form, and the transaction is tracked via a smart contract published on the blockchain”, 0136 “In general, there are several use case applications which can implement the proposed solution for trading digital assets. Overall, the following issues of trading digital content may be addressed: unauthorised copies or distribution, fake contents, false date or time, false authorship. Indeed, the usage of the proposed hardware or SoC in every device can ensure an end-to-end secure way to exchange information, without the need of a trusted third party, and without the need of sending unencrypted information to third-party external portals or software”, 0202 “The code may thus still be used and traded and the number of copies of the code may be controlled by means of a smart contract, recognising royalties to the NFT owner”, 0224 “Smart contract provides an audit trail or log of all the inputs and outputs of each transaction related to the digital asset”, claim 66 “…in which the smart contract is configured to execute the requirements for trading the digital asset and is configured to define how the digital asset is managed, owned and/or traded, in which the requirements for trading the digital asset include the maximum number of copies of the digital asset, in which the smart contract provides an audit trail or log of all the inputs and outputs of each transaction related to the digital asset, in which all the inputs and outputs of each transaction related to the digital asset are recorded in real time on the blockchain”)
As per claims 13 and 16
Bettati discloses a creator of maker of the specific product is recorded in the NFT as a first owner, and revenue automatically distributed to the creator or maker of the specific product through a smart contract on the blockchain every time the NFT is resold (0202 “The code may thus still be used and traded and the number of copies of the code may be controlled by means of a smart contract, recognising royalties to the NFT owner”, claim 66 “…in which the smart contract is configured to execute the requirements for trading the digital asset and is configured to define how the digital asset is managed, owned and/or traded, in which the requirements for trading the digital asset include the maximum number of copies of the digital asset, in which the smart contract provides an audit trail or log of all the inputs and outputs of each transaction related to the digital asset, in which all the inputs and outputs of each transaction related to the digital asset are recorded in real time on the blockchain”)
Claim Rejections - 35 USC § 103
The following is a quotation of 35 U.S.C. 103 which forms the basis for all obviousness rejections set forth in this Office action:
A patent for a claimed invention may not be obtained, notwithstanding that the claimed invention is not identically disclosed as set forth in section 102, if the differences between the claimed invention and the prior art are such that the claimed invention as a whole would have been obvious before the effective filing date of the claimed invention to a person having ordinary skill in the art to which the claimed invention pertains. Patentability shall not be negated by the manner in which the invention was made.
Claims 17 and 18 are rejected under 35 U.S.C. 103 as being unpatentable over Bettati as applied to claims 11 and 14 above, and further in view of Long et al. (U.S. Patent 11,075,891, hereinafter referred to as Long).
As per claims 17 and 18
Bettati, while disclosing the limitations of claims 11 and 14, does not explicitly disclose a login processing module configured to accept login information from a user and to allow the user to view the confidential information only when the login is successful. Long teaches a login processing module configured to accept login information from a user and to allow the user to view the confidential information only when the login is successful (18:5-18 “In some embodiments, an edge node can query the THETA blockchain to determine whether a given node, such as a downstream node, actually holds a token (e.g., an NFT). To make this determination, the edge node can generate a randomized nonce and send the randomized nonce to a downstream node to sign in order to provide proof of the downstream node's address. The nonce can include a random or pseudo-random number issued in an authentication protocol for verification purposes described above. Accordingly, the edge node can query the blockchain with the address obtained from the downstream node to determine whether the downstream node holds a given token, such as an NFT”, 6:36-41, “Thereafter, if the DRM server determines that the user is subscribed, the DRM server can issue a decryption key to the user such that the user's device (e.g., mobile phone, laptop, television, etc.) can use the decryption key to decrypt the encrypted stream received over the network”, 17:44-47 “If it is determined that the viewer node has the NFT, then the source cacher node can provide a decryption key; if not, the source cacher node can ignore the request for the key”, 25:30-31 “…only authorized nodes having the private decryption key can decrypt the data stream”)
It would have been obvious to one of ordinary skill in the art at the time of the invention to combine the method for trading a digital asset of Bettati with the non-fungible token (NFT) Based Digital Rights Management of Long for the purpose of providing a decentralized DRM solution that protects content owners’ copyrighted works when distributed over decentralized networks (2:32-35).
Conclusion
The prior art made of record and not relied upon is considered pertinent to applicant's disclosure.
Jakobsson et al. (U.S. Patent Publication 2022/0407702, hereinafter referred to as Jakobsson) discloses an NFT platform that mints NFTs, performs digital rights management, encryption and uses tokens for both identity documents and to represent artworks
Goldston et al. (U.S. Patent Publication 2021/0279305, hereinafter referred to as Goldston) discloses an extensive list of DRM conditions involving NFTs including derivative works.
Murray, NFTs and the Art World - What's Real, and What's Not, 29 UCLA ENT. L. REV. 25 (2021-2022)”, 35 pages provides an overview of NFTs and a description of what can and cannot be achieved with an NFT from a legal perspective and from a monetary perspective.
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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/JAMES D NIGH/Senior Examiner, Art Unit 3699