DETAILED ACTION
The present application, filed on 6/17/2024 is being examined under the AIA first inventor to file provisions.
The following is a non-final First Office Action on the Merits. Claims 12-21 are pending and have been considered below. Claims 1-11 have been canceled in a preliminary amendment.
Priority
This application is a CON of 18/155,479 01/17/2023 PAT 12,014,349 which is a DIV of 17/247,597 12/17/2020 PAT 11,580,520 which claims benefit of 62/949,190 12/17/2019. The priority is acknowledged.
Double Patenting Rejection
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 time wise extension of the "right to exclude" granted by a patent and to prevent possible harassment by multiple assignees. A nonstatutory obviousness-type 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 Omum, 686 F.2d 937, 214 USPQ 761 (CCPA 1982); In re Vogel/,422 F.2d 438,164 USPQ 619 (CCPA 1970); and, In re Thorington, 418 F.2d 528,163 USPQ 644 (CCPA 1969).
A timely filed terminal disclaimer in compliance with 37 CFR 1.321(c) or 1.321(d) may be used to overcome an actual or provisional rejection based on 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.
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This is a non-provisional obviousness-type double patenting rejection because the conflicting claims have been in fact patented.
Claims 12-17 are rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-9 of US12,014,349, in view of Marten (US 2021/0105563).
Regarding Claim 12: US12,014,349 discloses: A method of transacting a value of a digital token on a blockchain ledger comprising:
receiving by the mobile computing device, a media content containing an encoded digital token in an off-ledger condition; {see [claim1, claim5]}
decoding the encoded digital token by a representation of a digital wallet as a decoded digital token by the mobile computing device; and {see [claim1, claim5]}
submitting, by the mobile computing device, the decoded digital token to the blockchain ledger via a communication network. {see [claim1, claim5]}
US12,014,349 does not disclose, however Marten discloses:
listening to a media content by a mobile computing device; {see [0017]-[0018] mobile device … media content listening area}
In addition, it would have been obvious to one of ordinary skill in the art, at the time of filing, to modify US12,014,349 to include the elements of Marten. One would have been motivated to do so, in order to check out the received digital file (e.g., musical file). Furthermore, the Supreme Court has supported that combining well known prior art elements, in a well-known manner, to obtain predictable results is sufficient to determine an invention obvious over such combination (see KSR International Co. v. Teleflex Inc. (KSR), 550 U.S.,82 USPQ2d 1385 (2007) & MPEP 2143). In the instant case, US12,014,349 evidently discloses transferring content (e.g., musical files) to consumer. Marten is merely relied upon to illustrate the functionality of listening to content on a mobile device in the same or similar context. As best understood by Examiner, since both transferring content (e.g., musical files) to consumer, as well as listening to content on a mobile device are implemented through well-known computer technologies in the same or similar context, combining their features as outlined above using such well-known computer technologies (i.e., conventional software/hardware configurations), would be reasonable, according to one of ordinary skill in the art. Moreover, since the elements disclosed by US12,014,349, as well as Marten would function in the same manner in combination as they do in their separate embodiments, it would be reasonable to conclude that their resulting combination would be predictable. Accordingly, the claimed subject matter is obvious over US12,014,349 / Marten.
Regarding Claim 13: US12,014,349, Marten discloses the limitations of Claim 12. US12,014,349 further discloses:
receiving, by the mobile computing device, a validation of the decoded digital token against the digital token in an on-ledger condition on the blockchain ledger. {see [claim1, claim5]}
Regarding Claim 14: US12,014,349, Marten discloses the limitations of Claim 13. US12,014,349 further discloses:
reflecting the digital token in the representation of the digital wallet on the mobile computing device, {see [claim1, claim5]}
wherein the representation of the digital wallet corresponds with a digital wallet carried on the blockchain ledger. {see [claim1, claim5]}
Regarding Claim 15: US12,014,349, Marten discloses the limitations of Claim 14. US12,014,349 further discloses:
embedding a survey in the media content; {see [claim2, claim7]}
receiving the media content by the representation of the digital wallet; and {see [claim2, claim7]}
submitting, by the mobile computing device, the decoded digital token to the blockchain ledger upon completion of the survey. {see [claim2, claim7]}
Regarding Claim 16: US12,014,349, Marten discloses the limitations of Claim 15. US12,014,349 further discloses:
submitting information from the mobile computing device in exchange for the digital token. {see [claim3, claim8]}
Regarding Claim 17: US12,014,349, Marten discloses the limitations of Claim 16. US12,014,349 further discloses:
receiving the media content as a member of a targeted demographic group. {see [claim9]}
Claims 18-21 are rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-9 of US12,014,349.
Regarding Claim 18: US12,014,349 discloses: A non-transitory computer-readable memory adapted for use by a content distribution service provider to distribute a digital token, the non-transitory computer-readable memory used to direct a computer of the content distribution service provider to perform the steps of:
encoding a digital token carried in an on-ledger condition on a blockchain ledger as an encoded digital token; {see [claim1, claim5]}
embedding the encoded digital token in a media content; {see [claim1, claim5]}
transmitting the encoded digital token in an off-ledger condition during a playback of the media content. {see [claim1, claim5]}
Regarding Claim 19: US12,014,349 discloses the limitations of Claim 18. US12,014,349 further discloses:
receiving a decoded digital token decoded from the media content by a representation of a digital wallet operating on a mobile computing device. {see [claim1, claim5]}
Regarding Claim 20: US12,014,349 discloses the limitations of Claim 19. US12,014,349 further discloses:
receiving the decoded digital token via a communication network. {see [claim1, claim5]}
Regarding Claim 21: US12,014,349 discloses the limitations of Claim 20. US12,014,349 further discloses:
validating the decoded digital token against an on-ledger digital token; and {see [claim1, claim5]}
reflecting the digital token in a digital wallet on the blockchain ledger, the digital wallet corresponding to the representation of the digital wallet on the mobile computing device. {see [claim1, claim5]}
The prior art made of record and not relied upon which, however, is considered pertinent to applicant's disclosure:
US 20210019717 A1 FLINTER; Stephen Patrick et al. METHOD AND SYSTEM FOR MANAGEMENT OF DIGITAL MEDIA RIGHTS VIA BLOCKCHAIN A method for storing platform-agnostic digital media rights on a blockchain includes: receiving a transaction message related to a payment transaction, wherein the transaction message is formatted according to one or more standards and includes at least a plurality of data elements, the plurality of data elements including a first data element storing a primary account number and a second data element storing a product identifier; identifying a digital content identifier mapped to the product identifier; identifying a digital token mapped to the primary account number; generating a new blockchain data entry, wherein the blockchain data entry includes at least the digital token and the digital content identifier; and transmitting the new blockchain data entry to at least one node of a plurality of nodes comprising a blockchain network.
US 20200162237 A1 Chauhan; Ved Pratap Singh et al. METHOD AND SYSTEM FOR BLOCKCHAIN-IMPLEMENTED PROJECT MANAGEMENT A method for project management using a blockchain includes: receiving a project request including a project stream comprised of a plurality of role assignments and an ordering for the role assignments, wherein each role assignment indicates a corresponding public key; generating a first digital token; transmitting the first digital token to a first computing device associated with a public key corresponding to a first role assignment based on the ordering; receiving data from the first computing device including a data file, return token, and digital signature; validating the return token based on the first digital token; validating the digital signature using the public key corresponding to the first role assignment; transmitting the data file to a node in a blockchain network; and transmitting a second digital token to a second computing device associated with a public key corresponding to a second role assignment based on the ordering.
US 20190188704 A1 GRENDON; Lauren et al. METHOD AND SYSTEM FOR TRUST-BASED PAYMENTS VIA BLOCKCHAIN A method for processing a trust-based transaction via a blockchain includes: receiving data associated with a proposed trust-based transaction including at least a transaction amount, payment data, and a broker identifier; processing payment for the transaction amount using the payment data; identifying a blockchain address associated with a broker corresponding to the broker identifier; generating a digital token, wherein the digital token is unique to the proposed trust-based transaction; electronically transmitting the generated digital token to a first computing device; and electronically transmitting at least the transaction amount, blockchain address, and at least one of: the generated digital token and data used to generate the generated digital token to a node associated with a blockchain network.
US 20200211054 A1 Garg; Chandan et al. METHOD AND SYSTEM FOR SPAM PREVENTION IN BLOCKCHAIN ADVERTISING A method for adjusting a spam index for a blockchain advertiser based on user consensus includes: storing an advertiser profile related to an advertising entity including at least an index value and an identification value; receiving new blocks in a blockchain, each including a block header and blockchain data values, where a plurality of the data values each includes an advertiser identifier, advertisement value, and a recipient identifier; receiving a plurality of spam reports, each associated with one of the data values and including at least one of: the advertisement value included in the respective data value or a reference value generated by hashing the respective data value; determining a ratio of a number of spam reports to number of the data values that includes the advertisement value; and adjusting the index value included in the advertiser profile according to the ratio.
US 20200067696 A1 Sarin; Pankaj MULTI-BLOCKCHAIN DIGITAL TRANSACTION INFORMATION SEGREGATION SYSTEM he systems and methods of the multi-blockchain transaction information segregation system of the present disclosure receive a first digital transaction, which includes first digital transaction information and second digital transaction information, through a network via broadcast by a first transaction device. A primary blockchain address provided on a primary blockchain is then identified in the first digital transaction, and a primary blockchain smart contract that is stored on the primary blockchain in association with the primary blockchain address is accessed. The primary blockchain smart contract is then executed to cause the first digital transaction information to be stored on the primary blockchain, and the second digital transaction information to be stored on a secondary blockchain that is separate from the primary blockchain. In a specific example, the first digital transaction information identifies a physical property, and the second digital transaction information identifies a purchase price of the physical property.
US 10785035 B1 Lv; Hong Anti-replay attack authentication protocol Disclosed herein are methods, systems, and apparatus, including computer programs encoded on computer storage media, for enhancing blockchain network security. Embodiments of this specification include receiving a transaction request from a client, wherein the transaction request includes a transaction requested to be recorded on a blockchain and a transaction hash calculated based on hashing the transaction; determining the transaction hash is not previously stored in a cache resource or the blockchain; storing the transaction hash in the cache resource; and executing the transaction request.
Inquiries
Any inquiry concerning this communication or earlier communications from the examiner should be directed to Radu Andrei whose telephone number is 313.446.4948. The examiner can normally be reached on Monday – Friday 8:30am – 5pm EST. If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Patrick McAtee can be reached at 571.272.7575. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/Radu Andrei/
Primary Examiner, AU 3698