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 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: the cell image generation unit, NFT issuance unit, NFT transaction unit of claims 1-4 and 6 as well as the application unit of claim 5 each employ the nonce term “unit”, are recited in purely functional terms without reciting any structural elements and are terms that are not considered to denote structure to one of ordinary skill. The corresponding structure is shown in Fig. 4 and discussed in [0027] and corresponds to a high-level general-purpose computer; further, the structure of this general purpose computer is not specially adapted, tuned or designed but instead amounts to “apply-it” type of computer implementation for a generic NFT. See also the 35 USC 101 rejection in which these findings are applied to support lack of substantially more and failure to solve any technological problem.
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.
Double Patenting
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 conflicting claims 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); 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 nonstatutory double patenting provided the reference application or patent either is shown to be commonly owned with the examined application, or claims an invention made as a result of activities undertaken within the scope of a joint research agreement. See MPEP § 717.02 for applications subject to examination under the first inventor to file provisions of the AIA as explained in MPEP § 2159. See MPEP § 2146 et seq. for applications not subject to examination under the first inventor to file provisions of the AIA . A terminal disclaimer must be signed in compliance with 37 CFR 1.321(b).
The filing of a terminal disclaimer by itself is not a complete reply to a nonstatutory double patenting (NSDP) rejection. A complete reply requires that the terminal disclaimer be accompanied by a reply requesting reconsideration of the prior Office action. Even where the NSDP rejection is provisional the reply must be complete. See MPEP § 804, subsection I.B.1. For a reply to a non-final Office action, see 37 CFR 1.111(a). For a reply to final Office action, see 37 CFR 1.113(c). A request for reconsideration while not provided for in 37 CFR 1.113(c) may be filed after final for consideration. See MPEP §§ 706.07(e) and 714.13.
The USPTO Internet website contains terminal disclaimer forms which may be used. Please visit www.uspto.gov/patent/patents-forms. The actual filing date of the application in which the form is filed determines what form (e.g., PTO/SB/25, PTO/SB/26, PTO/AIA /25, or PTO/AIA /26) 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 www.uspto.gov/patents/apply/applying-online/eterminal-disclaimer.
Claims 1-10 are provisionally rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1, 2, 6, 7 and 8 of copending Application No. 18/714,704 in view of the prior art applied a below.
Claim 1 of the ‘704 application recites
1. A cell obtaining method for creating NFT based on a cell image, comprising: separating a cell from a biological sample; obtaining a stem cell by treating the cell with a dedifferentiation inducer; differentiating the stem cell; acquiring an image of the differentiated cell; and converting the image of the differentiated cell into an NFT image.
This claim maps to the cell image generation unit and NFT issuance unit of instant claim 1 and the corresponding steps of instant independent claim 7 that converts the cell image into an NFT image but lacks the highly conventional NFT transaction and management features of claims 1 and 7 which are clearly taught by the applied art below; it would also have been obvious to add such highly conventional NFT transaction features to the ‘704 application claims 1 and 7 and their dependent claims for the same reasons as below in the 35 USC 103 rejections which are hereby incorporated by reference and also supply all of the further and broadly recited features of the dependent claims 2-6 and 8-10. Also note the parallel claims from ‘704 (2, 6, 7, 8) which map directly to corresponding instant claims (8, 3, 9, 6).
This is a provisional nonstatutory double patenting rejection.
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 1-10 are rejected under 35 U.S.C. § 101 because the claimed invention is directed to a judicial exception, an abstract idea or mental processes, without significantly more.
Specifically, independent claim 1 recites a management system for generating and distributing a cell image-based NFT (non-fungible token), comprising:
a cell image generation unit that generates an image from a collected cell {mere data gathering elements that gather data (images) of the digital asset}
an NFT issuance unit that converts the cell image into an NFT image and stores and manages the NFT image {abstract idea}, and
an NFT transaction unit that brokers an online transaction for the issued NFT {abstract idea}.
As such, claim 1 is directed to taking a picture (generating an image) of an asset (collected biological cell (cell image)) and converting the information into an NFT which is a unique digital asset build on a blockchain. The “NFT issuance unit” and NFT transaction unit” individually and collectively constitute an abstract idea because they fall within the “Certain Methods of Organizing Human Activity” grouping of abstract ideas as a business method that merely automates a commercial/economic practice using a general-purpose computer and/or WURC (well-understood routine and conventional) elements as further analyzed below.
As to the remaining claims:
2. The management system of claim 1, wherein the NFT image is a static image or dynamic data to which sound is added {part of the abstract idea and merely specifies the nonfunctional data types [static image or video (dynamic data to which sound is added)] for the digital asset that is the subject of the transaction specified in the NFT contract brokered by the NFT transaction unit}.
3. The management system of claim 1, wherein the cell image generation unit acquires the collected cell as an imaging result using a fluorescence microscopy, a confocal microscopy, a phase-contrast microscopy, an electron microscopy, bright field imaging, or a combination thereof {mere data gathering elements that gather data (images) of the digital asset}.
4. The management system of claim 1, wherein the NFT issuance unit includes an NFT conversion unit that generates an NFT image, an encryption key, and a decryption key, an NFT storage management unit that stores the generated NFT image, encryption key, and decryption key, and an NFT providing unit that transfers the NFT image, the encryption key, and the decryption key when the transaction of the NFT image is completed {mere “apply it” implementation recited at a high level of generality and/or amounting to WURC elements as mapped below in the prior art rejection and as admitted by applicant as being prior art in [0027] and [0041]-[0048] by providing a thumbnail sketch of conventional NFT infrastructure and relying upon commercially available NFT platforms such as Ethereum for details thereof}.
5. The management system of claim 1, wherein the NFT transaction unit includes an application unit that provides the NFT image and basic information of a cell image provider and applies for online transaction of the NFT image, and a processing unit that processes NFT payment according to the NFT transaction application details and provides the NFT image, the encryption key and the decryption key to an NFT buyer when the payment is completed {mere “apply it” implementation recited at a high level of generality and/or amounting to WURC elements as mapped below in the prior art rejection and as admitted by applicant as being prior art in [0027] and [0041]-[0048] by providing a thumbnail sketch of conventional NFT infrastructure and relying upon commercially available NFT platforms such as Ethereum for details thereof}.
6. The management system of claim 1, wherein the NFT image further includes a digital image other than the cell image {part of the abstract idea and merely specifies the storing another image for the digital asset that is the subject of the transaction specified in the NFT contract brokered by the NFT transaction unit}.
7. A service providing method for generating and distributing a cell image-based NFT, comprising:
acquiring a cell image from a collected cell {mere data gathering};
issuing a blockchain-based NFT indicating ownership of the cell image so that the cell image has a unique token type used in a blockchain-based network; receiving a request related to the cell image from a service user terminal connected to the blockchain-based network; and providing the NFT to the service use terminal in response to the received request {abstract idea, because they fall within the “Certain Methods of Organizing Human Activity” grouping of abstract ideas as a business method that merely automates a commercial/economic practice using a general-purpose computer and/or WURC (well-understood routine and conventional) elements as further analyzed below.
8. The service providing method of claim 7, wherein the cell image is derived from a cell collected from an oral cavity or urine {part of the abstract idea and merely specifies the source of the nonfunctional data types for the digital asset that is the subject of the transaction specified in the NFT contract brokered by the NFT transaction unit}.
9. The service providing method of claim 7, wherein the NFT image is a static image or dynamic data to which sound is added {part of the abstract idea and merely specifies the nonfunctional data types [static image or video (dynamic data to which sound is added)] for the digital asset that is the subject of the transaction specified in the NFT contract brokered by the NFT transaction unit}.
10. The service providing method of claim 7, wherein the cell image acquires the collected cell as an imaging result using a fluorescence microscopy, a confocal microscopy, a phase-contrast microscopy, an electron microscopy, bright field imaging, or a combination thereof {mere data gathering elements that gather data (images) of the digital asset}.
The judicial exceptions are not integrated into a practical application because the additional claim elements merely employ routine and conventional laboratory techniques and generic digital asset concepts to gather and manipulate information. Specifically, the steps of generating an image from the collected cell, acquiring a cell image from a collected cell, and the cell-image generation unit that performs this function merely generates data that is later subjected to the abstract NFT issuances and transaction units/steps. These activities do not impose meaningful limits on the abstract idea itself.
The prior art rejects below confirm that the recited NFT processing (issuance, transaction, receiving request and providing the NFT in respect to the received request of the independent claims) as well as the NFT functionality of the dependent claims are individually and collectively well-understood and conventional. Indeed, the NFT functionality recited in the claims is broad, non-specific and generalized to all NFT platforms and transactions with the difference being the what the digital asset represents rather than any discernable technical difference or advantage.
The specification further defines that NFTs are used for business models, digital ownership, authentication, profile images, avatars, metaverse interactions, and commercialization of digital content ([0002-0006]; [0016]; [0048]).
The claims do not recite any technical improvement to cell biology, cell-image generation, stem-cell biology, cell differentiation, microscopy imaging, block chain architecture, NFT minting technology, cryptographic processing, image processing, or computer functionality. Rather, the claims merely apply known NFT concepts to conventional biological image data (cell images).
The claims also fail to recite any particular blockchain implementation, cryptographic protocol, or technical mechanism for creating the “NFT image”. There is no further step of applying the NFT determination in a technologically meaningful manner, such as improving blockchain operation, improving data storage, digital security, or biological imaging systems. Simply implementing the abstract idea of associating ownership or authenticity metadata with biological images using generic NFT concepts does not constitute a practical application of the abstract idea. The recited cell image generation and use of conventional cell imagers (e.g. claims 3 and 10) constitute insignificant extra-solution activities because they merely gather biological information to be used in the abstract NFT issuance and transaction steps. The claims do not recite any transformation of the biological material into a therapeutic product, treatment step, or any technological improvement arising from the NFT conversion process itself.
Enumerated groups of abstract ideas include certain methods of mental processes, mathematical concepts, classification, and information organization, see MPEP 2106.04(a) and 2106.04(a)(2). Limitations that the courts have found not to be enough to quality as 'significantly more' include: Simply appending well-understood, routine, conventional activities, known in the industry, specified at a high level of generality, to the judicial exception, as discussed in Alice Corp., 134 S. Ct. at 2359-60, 110 USPQ2d at 1984; and adding insignificant extra solution activity to the judicial exception, e.g., mere data gathering in conjunction with a law of nature or abstract idea ... so that the information can be analyzed by an abstract mental process, as discussed in CyberSource v. Retail Decisions, Inc., 654 F.3d 1366, 1375, 99 USPQ2d 1690, 1694 (Fed. Cir. 2011) (MPEP 2106.05 (l)(A)).
Before the effective filing date of the instant application, the NFT issuance unit, NFT transaction unit, NFT conversion unit that generates an NFT image, NFT encryption/decryption key of claim 4, online transaction and payment of claim 5
were well-understood, routine, and conventional activities engaged in by those skilled in the art as demonstrated by the prior art rejections of those elements below. The mere physical nature of obtaining and imaging cells does not automatically confer eligibility upon a claim directed to an abstract idea. The claims do not recite any specific technological implementation for NFT conversion, nor do they improve any computer technology or biological technology.
With regard to Step 2A, prong one, the claims are directed to collecting biological image formation, evaluating or associating the information with ownership/authentication metadata, and creating a digital asset representation. These activities constitute abstract information processing and commercial interaction concepts. With regard to Step 2A, prong two, the judicial exception is not integrated into a practical application because the imaging steps merely constitute conventional data-gathering activity, and the NFT processing steps are themselves abstract ideas and/or WURC. The claims do not recite any technological improvement to blockchain systems, NFT architectures, imaging processing systems, or biological imaging technique data conversion implementation, see MPEP 2106.05(f).
As discussed above with respect to integration of the abstract idea into a practical application, the recited additional elements amount to no more than mere instructions to apply the exception using a generic computer component (See MPEP 2106.05(f)) and limits the judicial exception to the particular environment of computers (See MPEP 2106.05(h)). The additional elements of the instant underlying process, when taken in combination, together do not offer substantially more than the sum of the function of the elements when each is taken alone. Mere instructions to apply an exception using a generic computer component cannot provide an inventive concept in Step 2B
Therefore, the claimed subject matter, as individual elements and as a combination of elements, does not recite 'significantly more' than the judicial exception.
The claimed subject matter does not recite patent eligible subject matter under 35 USC § 101.
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)(1) the claimed invention was patented, described in a printed publication, or in public use, on sale, or otherwise available to the public before the effective filing date of the claimed invention.
(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 1, 2, 6, 7, 8, and 9 are rejected under 35 U.S.C. 102(a)(1) and (a)(2) as being anticipated by Canterbury (US 2020/0351094 A1).
Claim 1
In regards to claim 1, Canterbury discloses a management system for generating and distributing a cell image-based NFT {see [0013] method and system for generating, tracking, validating, and distributing a unique representation of a biological asset as a non-fungible token (NFT). See below for “cell image based”}, comprising:
a cell image generation unit that generates an image from a collected cell
{see [0019], [0026] bioscan image of cell, [0048]-[0049], claim 15 in which biosignature from which the NFT is generated includes a wide variety of biospecimens including cells (e.g. red blood cells, white blood cells, platelets, erythrocytes, fetal cells, stem cells, tumor cells, tumor slices mounted in slides which may be prepared from biopsies and are composed of cells, fine needle aspirations, urine collection and further including image-based analysis (e.g. imaging of tumor tissues/cells using microscopy techniques) suspended tumor cells and including a variety of assays and test results thereof. See also tester 102, Fig. 1, [0013]-[0014] that tests/analyzed a sample of biological material such as the various types of cells noted above which includes microscope and images as of cells as per [0019].
See also Figs. 1-3 including apparatus NFT management and Fig. 4 method of NFT management including Tester 102 and biosignatures 104A};
an NFT issuance unit that converts the cell image into an NFT image and stores and manages the NFT image
{[0021]-[0037] issuing a biological token by defining/issuing a non-fungible cryptographic token that converts the cell image into an NFT image along with NFT token ID and metadata. See also Figs. 1-4 including cryptographic NFT tokens 104B and metadata 104G. See also smart contract 104J and distributed ledger for managing the NFT image, abstract, Figs. 1, 3, [0004], [0014]}; and
an NFT transaction unit that brokers an online transaction for the issued NFT
{see smart contract 104J and distributed ledger for managing the NFT image, abstract, Figs. 1, 3, [0004], [0014]. Figs 3 and 4 further illustrate NFT brokering and online transactions for the issued NFT, [0017]-[0018]}.
Claim 2
In regards to claim 2, Canterbury discloses wherein the NFT image is a static image or dynamic data to which sound is added {see above mapping for claim 1 including static image-based biosignatures of cells}.
Claim 6
In regards to claim 6, Canterbury discloses wherein the NFT image further includes a digital image other than the cell image {see above including [0019] in which the biosignature of the biological sample (e.g. cell image) may be defined one or a combination of different assays and scans such that the biosignature which is used for the NFT includes a combination of the cell image and a digital image other than the cell image.}.
Claim 7
In regards to claim 7, Canterbury discloses a service providing method for generating and distributing a cell image-based NFT {see [0013] method and system for generating, tracking, validating, and distributing a unique representation of a biological asset as a non-fungible token (NFT). See below for “cell image based”}, comprising:
acquiring a cell image from a collected cell
{see [0019], [0026] bioscan image of cell, [0048]-[0049], claim 15 in which biosignature from which the NFT is generated includes a wide variety of biospecimens including cells (e.g. red blood cells, white blood cells, platelets, erythrocytes, fetal cells, stem cells, tumor cells, tumor slices mounted in slides which may be prepared from biopsies and are composed of cells, fine needle aspirations, urine collection and further including image-based analysis (e.g. imaging of tumor tissues/cells using microscopy techniques) suspended tumor cells and including a variety of assays and test results thereof. See also tester 102, Fig. 1, [0013]-[0014] that tests/analyzed a sample of biological material such as the various types of cells noted above which includes microscope and images as of cells as per [0019].
See also Figs. 1-3 including apparatus NFT management and Fig. 4 method of NFT management including Tester 102 and biosignatures 104A};
issuing a blockchain-based NFT indicating ownership of the cell image so that the cell image has a unique token type used in a blockchain-based network
{[0021]-[0037] issuing a biological token by defining/issuing a blockchain-based non-fungible cryptographic unique token that converts the cell image into an NFT image along with NFT token ID and metadata. See also Figs. 1-4 including cryptographic NFT tokens 104B and metadata 104G. See also smart contract 104J and distributed ledger for managing the NFT image, abstract, Figs. 1, 3, [0004], [0014]. Further as to blockchain and unique cryptographic title see title, [0006], [0012]-[0014], [0017], Fig. 1 wherein the distributed ledger 112 is part of the blockchain in which a collection of processors forms a blockchain-based network, [0017] in the conventional fashion of blockchains that distribute the ledger across the various, different processors in the blockchain network};
receiving a request related to the cell image from a service user terminal connected to the blockchain-based network {Figs. 3, 4, receive query step 216, [0017]-[0018]. See also the various applications of biosignature and cell-based NFTs which include receiving requests and providing the NFT to a service terminal (another node network as the remote processors 114 of Fig. 3 and further explained in [0038]-[0050]}; and
providing the NFT to the service use terminal in response to the received request {Figs. 3, 4, transmit signal representing NFT token step 218, [0017]-[0018]. See also the various applications of biosignature and cell-based NFTs which include receiving requests and providing the NFT to a service terminal (another node network as the remote processors 114 of Fig. 3 and further explained in [0038]-[0050]}.
Claim 8
In regards to claim 8, Canterbury discloses wherein the cell image is derived from a cell collected from an oral cavity or urine {see above cites in claim 1 including [0004], [0014], [0019] claim 7 including urine and saliva which would include cells collected from an oral cavity}.
Claim 9
In regards to claim 9, Canterbury discloses wherein the NFT image is a static image or dynamic data to which sound is added {see above mapping for claim 1 including image-based biosignatures of cells}.
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 3 and 10 are rejected under 35 U.S.C. 103 as being unpatentable over Cantebury and Ortega {Ortega DR, Oikonomou CM, Ding HJ, Rees-Lee P; Alexandria; Jensen GJ. ETDB-Caltech: A blockchain-based distributed public database for electron tomography. PLoS One. 2019 Apr 15;14(4):e0215531. doi: 10.1371/journal.pone.0215531. PMID: 30986271; PMCID: PMC6464211}.
Claims 3 and 10
In regards to claims 3 and 10, Canterbury discloses “using one or more microscopy techniques” in [0019] for cells but does not mention the specific, conventional microscope from the laundry list in this claim. Initially, it is noted that providing a laundry list of options such as in claim 10 reciting “wherein the cell image acquires the collected cell as an imaging result using a fluorescence microscopy, a confocal microscopy, a phase-contrast microscopy, an electron microscopy, bright field imaging, or a combination thereof” is considered to be an admission of equivalency between the listed options particularly, as here, no details of applying or adapting such microscopes to collecting cell images for NFTs is provided.
Ortega is a highly analogous reference from the same field of cell image-based NFTs. See title, abstract and Introduction. Ortega also teaches wherein the cell image acquires the collected cell as an imaging result using a fluorescence microscopy, a confocal microscopy, a phase-contrast microscopy, an electron microscopy, bright field imaging, or a combination thereof (see the three-dimensional electron microscopy (3D EM) techniques that provide a series of 2D projection images, 3D reconstructed tomogram, video and segmentation files of cellular structures, cells, and cellular complexes. See also Cell Image Library and Electron Microscopy Data Bank (EMDB) which are also sources the cell image-based NFTs generated and managed by Ortega.
It 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 to have modified Cantebury which already discloses a service providing method for generating and distributing a cell image-based NFT including acquiring a cell image from a collected cell, and issuing a blockchain-based NFT indicating ownership of the cell image so that the cell image has a unique token type used in a blockchain-based network such that the cell-image is acquired as an imaging result using a fluorescence microscopy, a confocal microscopy, a phase-contrast microscopy, an electron microscopy, bright field imaging, or a combination thereof as taught by Ortega because electron tomography microscopy “reveals many details about cell ultrastuctures that are inaccessible by other techniques: and “also yield 3D information about cellular complexes” thus increasing the usefulness of the cell-image-based NFT system, because there is a reasonable expectation of success and/or because doing so merely combines prior art elements according to known methods to yield predictable results.
Claim 4 is rejected under 35 U.S.C. 103 as being unpatentable over Cantebury and Shapiro (US 20220309491 A1).
Claim 4
In regards to claim 4, Canterbury discloses
wherein the NFT issuance unit includes an NFT conversion unit that generates an NFT image, an encryption key,
an NFT storage management unit that stores the generated NFT image, encryption key,
an NFT providing unit that transfers the NFT image, the encryption key,
Shapiro also teaches the conventional use of a decryption key in an NFT system including wherein the NFT issuance unit includes an NFT conversion unit that generates an NFT image, an encryption key, and a decryption key; an NFT storage management unit that stores the generated NFT image, encryption key, and decryption key, and an NFT providing unit that transfers the NFT image, the encryption key, and the decryption key when the transaction of the NFT image is completed {see Figs. 1, 3, 4, 7, 12, [0066]-[0070]}.
It 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 to have modified Cantebury which already discloses a service providing method for generating and distributing a cell image-based NFT including acquiring a cell image from a collected cell, and issuing a blockchain-based NFT indicating ownership of the cell image so that the cell image has a unique token type used in a blockchain-based network and wherein Cantebury also discloses wherein the NFT issuance unit includes an NFT conversion unit that generates an NFT image, an encryption key, an NFT storage management unit that stores the generated NFT image, encryption key, an NFT providing unit that transfers the NFT image, the encryption key, .
Claim 5 is rejected under 35 U.S.C. 103 as being unpatentable over Cantebury and Gross (US 2025/0131994 A1) and Gross2 {Gross MS, Hood AJ, Miller Jr RC, Nonfungible Tokens as a Blockchain Solution to Ethical Challenges for the Secondary Use of Biospecimens: Viewpoint, JMIR Bioinform Biotech October 2021;2(1):e29905, doi: 10.2196/29905, PMCID: 11168237}. It is noted that Gross2 is an intervening reference between the two priority dates of the instant application. Gross2 is not also not necessary to reject claim 5 as Gross supplies all the elements missing from Cantebury regarding NFT payments for cell-imaged based NFTs. Nevertheless, Gross2 provides some interesting and useful commentary regarding the ethical issues involved in health information and specifically human cell bioinformatics that may be solved using NFTs.
Claim 5
In regards to claim 5, Canterbury discloses wherein the NFT transaction unit includes an application unit that provides the NFT image and basic information of a cell image provider and applies for online transaction of the NFT image {see Fig. 4 [0017]-[0018] including the biosignature supply chain which provides the NFT image governed by the smart contract and applies for an online transaction of the NFT image}, and
a processing unit that recipient
Gross is a highly analogous reference from the same field of cell data based NFT token system including tokens for data representing physical and digital specimens relating to health data specifically including cell lines and parts of cells such as organoids. See title, abstract, Figs. 1A-5, and [0002]-[0006]. Gross2 is a related article from the same author focusing on the ethical challenges for secondary use of biospecimens, which problems are solved by the use of NFTs.
Gross also teaches that NFT transactions are highly advantageous for health related data including digital specimens of cell lines and parts of cells by providing researchers with custody of the information required to conduct research in a way that maintains patient privacy while ensuring that the patient may benefit financially (NFT payment processing) from the use of their NFT specimen. See [0003], [0007]-[011], [0043], [0135]-[0137]. Further as to decryption key see [0123].
It 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 to have modified Cantebury which already discloses a service providing method for generating and distributing a cell image-based NFT including acquiring a cell image from a collected cell, and issuing a blockchain-based NFT indicating ownership of the cell image so that the cell image has a unique token type used in a blockchain-based network and wherein Cantebury also discloses wherein the NFT issuance unit includes an NFT conversion unit that generates an NFT image, an encryption key, an NFT storage management unit that stores the generated NFT image, encryption key, an NFT providing unit that transfers the NFT image, the encryption key, when the transaction of the NFT image is completed such that the NFT framework (issuance, storage, providing, etc.) also includes payment (NFT payment processing) as taught by Gross such as by altering the Cantebury’s smart contract governing the NFT to include payment for the NFT and a decryption key as also taught by Gross because providing payment for such cell-based NFTs to solve certain ethical issues associated with exchanging health related information (e.g. to prevent another Henrietta Lacks situation in which her immortal cell lines have been exploited for financial gain without compensation to Ms. Lacks as per Gross2, abstract, Intro, Tech solutions and conclusion) as taught by Gross in (see title, [0004], [0006], [0028], [0141]-[0143], because encrypted data is useless without a corresponding decryption key, because adding the decryption key enables successful viewing and dissemination of decrypted NFT contents, because there is a reasonable expectation of success and/or because doing so merely combines prior art elements according to known methods to yield predictable results.
Conclusion
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/MICHAEL ROBERT CAMMARATA/Primary Examiner, Art Unit 2667
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